`
`______________
`
`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
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`Jiawei Photovoltaic Lighting Co, Ltd.
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`(“Joinder Petitioners”), submits,
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`concurrently with this motion, a petition for inter partes review (“Joinder
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`Petition”) of claims 1, 3–8, and 11–14 of U.S. Patent No. 8,672,518 (“the ’518
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`patent”) (Ex. 1001). Petitioner respectfully requests joinder pursuant to 35 U.S.C.
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`§ 315(c) and 37 C.F.R. § 42.122(b) of the Joinder Petition with a pending inter
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`partes review filed by Technical Consumer Products, Inc., Nicor Inc., and Amax
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`Lighting (“Original Petitioners”), IPR2017-01285 (the “’1285 IPR”). Joinder is
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`appropriate because it will promote efficient and consistent resolution of the
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`validity of a single patent and will not prejudice any of the parties to the ’1285
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`IPR. Petitioner’s request for joinder is timely because it was filed “no later than
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`one month after the institution date of any inter partes review for which joinder is
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`requested.” 37 C.F.R. § 42.122(b).
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`II. BACKGROUND
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`On April 17, 2017, Original Petitioners requested review of claims 1, 3–8,
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`and 10–14 in the ’1285 IPR. On November 1, 2017, the Board instituted review of
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`claims 1, 3–8, and 11–14, but denied review of claim 10. The instituted grounds
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`consisted of the following:
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`
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`1
`
`
`
`References
`Soderman and Wegner
`Soderman, Wegner, and Silescent
`Zhang and Wegner1
`Zhang, Wegner, and Silescent
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`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
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`Today, concurrent with the instant motion for joinder, Petitioner filed the
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`Joinder Petition asserting identical arguments and grounds of unpatentability
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`against the same patent claims as in the ’1285 IPR, except for claim 10.
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`III. ARGUMENT
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`A. Legal Standard
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`The Board has authority to join as a party any person who properly files a
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`petition for inter partes review to an instituted inter partes review. 35 U.S.C.
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`§ 315(c). A motion for joinder must be filed within one month of institution of any
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`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
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`deciding whether to grant a motion for joinder, the Board considers several factors
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`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
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`joined has presented any new grounds of unpatentability; (3) what impact, if any,
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`joinder would have on the trial schedule for the existing review; and (4) how
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`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
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`the combination of Soderman and Silescent, but the remainder of the decision
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`makes clear the ground is as the petition proposed.
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`2
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`
`
`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
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`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
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`(quoting 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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`Petitioners’ Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
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`November, 1 2017, decision on institution in the ’1285 IPR. See 37 C.F.R.
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`§ 42.122(b). The one-year bar under 37 C.F.R. § 42.101(b) does not apply because
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`the Petition is filed concurrently with this Motion for Joinder. 37 C.F.R.
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`§ 42.122(b). See Teva Pharmaceuticals USA, Inc. v. Allergan, Inc., IPR2017-
`
`00579, paper 9, at 4–5.
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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. The Joinder Petition is substantively identical to the Original Petition as to
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`the subset of claims and grounds at issue and does not present any new prior art,
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`grounds of unpatentability, exhibits, or arguments. Joinder is also appropriate so
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`that Joinder Petitioners can maintain the proceeding, in which the Original
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`Petitioners presented a reasonable likelihood of prevailing, in the event that
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`Original Petitioners cease to participate. Joinder will have minimal, if any, impact
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`on the trial schedule, as the Joinder Petition presents no new prior art analysis or
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`3
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`
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`expert testimony. Discovery and briefing will be simplified because Joinder
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`Petitioners are willing to accept a limited “understudy” role so long as Original
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`Petitioner remains a participating party. Accordingly, joinder is appropriate and
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`warranted here.
`
`
`1.
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`Joinder is Appropriate because No New Grounds
`or Issues Are Raised
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`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung v. Raytheon, IPR2016-00962, Paper 12, at 9 (internal
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`quotations and citations omitted) (emphases in original).2 Here, joinder with the
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`pending ’1285 IPR is appropriate because the Joinder Petition relies on identical
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`arguments and the same instituted grounds at issue in the instituted proceeding.
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`The Joinder Petition relies on the same expert declaration and other supporting
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`2 See also Sony Corp. et al. v. Memory Integrity, LLC, IPR2015-01353, Paper 11,
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`at 5–6 (granting institution of IPR and motion for joinder where petitions relied
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`“on the same prior art, same arguments, and same evidence, including the same
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`expert and a substantively identical declaration” (citations omitted)); Perfect World
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`Entm’t, Inc. v. Uniloc USA, Inc., IPR2015-01026, Paper 10; Fujitsu Semiconductor
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`Ltd. v. Zond, LLC, IPR2014-00845, Paper 14; Enzymotec Ltd. v. Neptune Techs. &
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`Bioresources, Inc., IPR2014-00556, Paper 19.
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`4
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`
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`exhibits, and asserts the same combinations of prior art upon which the Board has
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`instituted inter partes review. The Joinder Petition is substantively identical to the
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`Original Petition as to the subset of instituted claims and grounds, with only non-
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`substantive differences such as different mandatory notices.
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`Because the Joinder Petition and the Original Petition are substantively
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`identical as to the instituted claims and grounds, good cause exists to join the
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`proceedings so that the Board can efficiently resolve the common grounds in both
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`Petitions in a single proceeding. Furthermore, the grounds at issue as to the ’518
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`Patent raised in the ’1285 IPR are issues that affect the Joinder Petitioners, who
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`stand accused of infringing certain claims of the ’518 Patent, as well as the broader
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`public interest in the likely unpatentability of the issued claims. Joinder is therefore
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`appropriate for the additional reason that the grounds of unpatentability upon
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`which the Board instituted review can be resolved through the participation of
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`Joinder Petitioners, even if Original Petitioners were to reach a settlement with
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`Patent Owner or otherwise cease to participate in the proceeding.
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`2.
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`Joinder Will Not Negatively Impact the Trial
`Schedule
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`Joinder will have minimal impact, if any, on the existing IPR trial schedule
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`because the Joinder Petition presents no new issues or arguments for Patent
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`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
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`5
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`
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`motion for joinder where “joinder should not necessitate any additional briefing or
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`discovery from Patent Owner beyond that already required in [the original IPR].”).
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`Further, because the Joinder Petition relies on the same expert declaration as the
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`Original Petition, only a single deposition is needed for the proposed joined
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`proceeding. Absent any new issues, there is no reason to materially delay or
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`modify the existing trial schedule.
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`Accordingly, joinder with the pending ’1285 IPR will not unduly impact the
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`trial schedule. However, even if a minor adjustment of the trial schedule was
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`appropriate, the rules provide for such an adjustment, which is a routine
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`undertaking by parties in IPR proceedings. See 37 C.F.R. § 42.100(c). A
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`reasonable adjustment in the trial schedule, if needed, should not preclude joinder
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`here.
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`3.
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`Joinder Petitioners Agree to an “Understudy” Role
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`Additionally, Joinder Petitioners agree to take an “understudy” role in the
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`joined proceeding, absent termination of the Original Petitioner as a party. In
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`particular, Joinder Petitioners agree that, in the joined proceeding, the following
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`conditions shall apply so long as the Original Petitioners remain an active party to
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`these proceedings, as previously approved by the Board in similar circumstances:
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`6
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`
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`(a)
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`all filings by Joinder Petitioners in the joined proceeding be
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`consolidated with the filings of the Original Petitioner, unless a filing solely
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`concerns issues that do not involve the Original Petitioner;
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`(b)
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`Joinder Petitioners shall not be permitted to raise any new grounds not
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`already instituted by the Board, or introduce any argument or discovery not already
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`introduced by the Original Petitioner;
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`(c)
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`Joinder Petitioners shall be bound by any agreement between Patent
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`Owner and the Original Petitioner concerning discovery and/or depositions; and
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`(d)
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`Joinder Petitioners at deposition shall not receive any direct, cross
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`examination or redirect time beyond that permitted for the petitioner in this
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`proceeding alone under either 37 C.F.R. § 42.53 or any agreement between Patent
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`Owners and the Original Petitioner. See Mylan Pharms. Inc. v. Novartis AG, Case
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`IPR2014-00550, slip op. at 5 (PTAB Apr. 10, 2015) (Paper 38).
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`The Original Petitioners will not oppose Joinder Petitioners’ motion for
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`joinder and does not object to Joinder Petitioners’ proposed understudy role in the
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`joined proceeding.
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`The Board has consistently held that that the acceptance of an “understudy”
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`role removes any undue complications or delay that might allegedly result from
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`joinder. See, e.g., Sony Corp. et al. v. Memory Integrity, Case IPR2015-01353, slip
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`op. at 7 (PTAB Oct. 15, 2015) (Paper 11); Mylan Pharmaceuticals Inc. et al. v. Dr.
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`7
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`
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`Falk Pharma GmbH, Case IPR2016-01386, slip op. at 6 (PTAB Nov. 30, 2016)
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`(Paper 9).
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`IV. CONCLUSION
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`Based on the factors discussed above, Joinder Petitioners respectfully
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`request that this motion be granted and an inter partes review of the challenged
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`claims 1, 3–8, and 11–14 of the ’518 patent be instituted based on the same
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`grounds authorized and for the same reasons discussed in the decision on
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`institution in the ’1285 IPR, and that this proceeding be joined with the ’1285 IPR.
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`Dated: November 30, 2017
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`
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`
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`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
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`Certificate of Service
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.105(b), I hereby certify that on
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`November 30, 2017, I caused a true and accurate copy of the foregoing Motion
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`for Joinder to be served upon the following attorneys of record via overnight
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`mail and email:
`
`Mark F. Warzecha,
`Esq. Widerman
`Malek, PL
`1990 W. New Haven Avenue
`Suite 201
`Melbourne FL 32904
`
`
`/Mark Nelson/
`
`
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`9
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