UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`WAHOO FITNESS LLC.,
`Petitioner,
`v.
`
`BLACKBIRD TECH LLC.,
`Patent Owner.
`_____________
`Case IPR. No. Unassigned
`Patent 6,434,212 B2
`Title: PEDOMETER
`_____________
`
`
`PETITIONER WAHOO FITNESS LLC’S MOTION FOR JOINDER
`UNDER 35 C.F.R. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) TO
`RELATED INTER PARTES REVIEW NO. IPR2017-02012
`
`
`
`
`
`
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`WAHOO FITNESS LLC.,
`Petitioner,
`v.
`
`BLACKBIRD TECH LLC.,
`Patent Owner.
`_____________
`Case IPR. No. Unassigned
`Patent 6,434,212 B2
`Title: PEDOMETER
`_____________
`
`
`PETITIONER WAHOO FITNESS LLC’S MOTION FOR JOINDER
`UNDER 35 C.F.R. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) TO
`RELATED INTER PARTES REVIEW NO. IPR2017-02012
`
`
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`TABLE OF CONTENTS
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`Page
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`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`I.
`STATEMENT OF MATERIAL FACTS ........................................................ 3
`II.
`III. APPLICABLE STANDARD .......................................................................... 4
`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 5
`Joinder is Appropriate Because It Meets the Statutory Purposes of
`A.
`Joinder in an IPR and Joinder Here Will Not Impact the Board’s
`Ability to Complete the Review in a Timely Manner ........................... 5
`The Wahoo IPR Presents No New Grounds of Unpatentability ........... 7
`B.
`C. No Impact on the Trial Schedule ........................................................... 7
`D. How Briefing and Discovery May be Simplified ................................. 8
`CONCLUSION ................................................................................................ 8
`
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`V.
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`
`
`i
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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` Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b),
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`petitioner Wahoo Fitness LLC (“Wahoo”) requests that it be joined as a party to
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`the following pending (but not yet initiated) inter partes review proceeding
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`concerning the same patent-at-issue here, U.S. Patent No. 6,434,212 (“the ‘212
`
`Patent.”): Fitbit Inc. v. Blackbird Tech LLC., Case IPR2017-02012 (filed August
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`29, 2017) (the “Fitbit IPR”). Concurrently herewith, Wahoo has filed a “Petition
`
`for Inter Partes Review of Claims 2, 5, and 6 of U.S. Patent No. 6,434,212 (the
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`“Wahoo IPR”). The Wahoo IPR presents the same grounds of invalidity as have
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`been raised in the Fitbit IPR. In addition, the Petition filed by Wahoo is identical to
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`the Fitbit IPR Petition in all substantive respects, including reliance on the same
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`exhibits and reliance on the same expert declaration testimony. The only
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`differences relate to the identification of the correct Petitioner, mandatory notices,
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`and other non-substantive matter. Fitbit does not oppose this motion.
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` Wahoo’s request for joinder is timely because it was filed prior to one month
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`after the institution date of the inter partes review for which joinder is requested.
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`37 C.F.R. § 42.122(b). More specifically, this filing is timely because it is filed
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`before the institution date of the Fitbit IPR. See Mercedes-Benz USA, LLC v.
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`Innovative Display Techs. LLC, Case IPR2015-00360, slip. op. at 4 (PTAB May
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`
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`1
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`
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`22, 2015) (Paper 22) (holding joinder motion timely, as Petition was filed before
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`the institution date of the proceeding to which joinder was sought); Taiwan
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`Semiconductor Mfg. Co. v. Zond, LLC, Case IPR2014-00781, slip. op. at 4 (PTAB
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`May 29, 2014) (Paper 5) (explaining that pre-institution joinder movant “should
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`indicate whether it would withdraw non-instituted grounds of unpatentability
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`should the Board institute an inter partes review with less than all of the asserted
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`grounds of unpatentability in [the earlier-filed, not-yet-instituted IPR]
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`proceedings”).
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`
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`In addition to being timely, Petitioner respectfully submits that joinder of
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`these proceedings is warranted. Joinder will not impact the Board’s ability to
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`complete its review in the statutorily-prescribed timeframe. As mentioned, the
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`unpatentability grounds raised in this proceeding are identical to the
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`unpatentability grounds raised in the Fitbit IPR. Also, Petitioner requests that the
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`institution of its Petition be limited solely to the grounds instituted in the Fitbit
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`IPR. Further, if joined, Petitioner agrees to adhere to all applicable deadlines in the
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`Fitbit IPR and coordinate all filings with the Petitioner in the Fitbit IPR (“Fitbit
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`Petitioner”). The Fitbit Petitioner will maintain the lead role in the proceedings so
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`long as Fitbit is a party to the proceedings. Lastly, the Board can implement
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`procedures that are designed to minimize any impact to the schedule of the Fitbit
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`IPR, including, for example, consolidation of filings and coordination among
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`2
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`petitioners. To that end, Wahoo is willing to serve in a limited “understudy” role to
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`streamline discovery and briefing.
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` Petitioner Wahoo therefore requests that joinder be granted.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On August 9, 2016, Blackbird Technologies LLC (“Blackbird”) filed
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`
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`complaints in the United States District Court for the District of Delaware accusing
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`Petitioner and six other parties of infringing the ‘212 Patent. See, e.g., Blackbird
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`Tech LLC d/b/a Blackbird Technologies v. Wahoo Fitness, LLC, 1-16-cv-00688
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`(August 9, 2016, D. Del.).
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`2.
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`In its Complaint, Blackbird purports to be the owner of the ‘212
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`Patent. See id.
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`3.
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`On August 29, 2017, Fitbit timely filed a petition seeking inter partes
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`review of Claims 2, 5 and 6 of the ‘212 Patent. The Petition was accorded Case
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`No. IPR2017-02012.
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`4.
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`The Fitbit IPR Petition asserts the following grounds of
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`unpatentability:
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`a. Ground 1: Claims 2 and 5 are anticipated pursuant to § 102 by
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`Amano;
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`b. Ground 2: Claims 2 and 5 are obvious pursuant to § 103 in light of
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`Amano; and
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`3
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`c. Ground 3: Claim 6 is obvious pursuant to § 103 based on Kato in view
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`of Amano.
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`5.
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`Today, concurrent with the instant motion for joinder, Wahoo filed an
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`IPR petition asserting the same three grounds of unpatentability against the same
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`patent claims of the ‘212 Patent as raised in the Petition from the Fitbit IPR. See
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`Wahoo Fitness, LLC v. Blackbird Technologies LLC, Case No. IPR2017-02012,
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`Paper 1. As stated in Wahoo’s IPR Petition and in this motion, Wahoo is willing to
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`withdraw any grounds of unpatentability that the Board denies in the Fitbit IPR
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`Petition.
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`6. Wahoo’s IPR Petition is substantively identical to Fitbit’s IPR Petition
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`and includes all the same exhibits as those filed in the Fitbit IPR, including the
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`same expert declaration testimony.
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`
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`III.
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`APPLICABLE STANDARD
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`The Leahy-Smith America Invents Act (AIA) gives the Board discretion to
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`join any person as a party to another petitioner’s IPR. 35 U.S.C. § 315(c). In
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`deciding whether to exercise its discretion, the Board considers factors including:
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`(1) the movant’s reasons why joinder is appropriate; (2) whether the new petition
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`presents any new grounds of unpatentability; (3) what impact, if any, joinder
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`would have on the trial schedule for the existing review; and (4) how briefing and
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`discovery may be simplified. Dell Inc. v. Network-1 Security Solutions, Inc., Case
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`4
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`
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`IPR2013-00385, slip. op. at 3-4 (PTAB July 29, 2013) (Paper 17). As set forth
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`below, an analysis of these factors supports joinder.
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`IV.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A.
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`Joinder is Appropriate Because It Meets the Statutory Purposes
`of Joinder in an IPR and Joinder Here Will Not Impact the
`Board’s Ability to Complete the Review in a Timely Manner
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`Joinder here meets the statutory purposes of joinder because Petitioner is
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`filing this Petition and Motion for Joinder to ensure that any instituted IPR trial is
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`completed in the event that the Fitbit Petitioner reaches a settlement with Patent
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`Owner. Ensuring that a final written decision is issued relative to the patentability
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`of the ‘212 Patent will minimize issues in the underlying litigations filed by Patent
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`Owner. For example, if the Board terminated the Fitbit IPR, Petitioner would be
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`required to reargue the same arguments that Fitbit has already asserted, that are
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`likely to prevail in the Fitbit IPR.
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`Importantly, the statutory requirements for joinder were expressly set up to
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`allow for this type of joinder to ensure an IPR proceeding reaches a final written
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`decision. For example, the 35 U.S.C. § 315(b) one-year time bar, that prevents
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`defendants from pursuing an IPR more than one year after having been served a
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`federal district court complaint of patent infringement, does not apply to joinder
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`petitions. This indicates Congress’s intent to allow the Board to receive input on
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`5
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`the patentability of a challenged patent once an IPR proceeding is initiated, even
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`after a proceeding has been settled with respect to the original petitioner.
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`Further, joinder will not impact the Board’s ability to issue its decision in a
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`timely manner. For simplicity and efficiency, Petitioner has copied the substance
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`of Fitbit’s petition and accompanying declaration. Petitioner does not seek to
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`introduce grounds or claims not in the Fitbit IPR and seeks only to join the
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`proceeding as instituted. See Taiwan Semiconductor, IPR2014-00781, Paper 5, at 4
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`(explaining that pre-institution joinder movant “should indicate whether it would
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`withdraw non-instituted grounds of unpatentability should the Board institute an
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`inter partes review with less than all of the asserted grounds of unpatentability in
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`[the earlier-filed, not-yet-instituted IPR] proceedings”). Petitioner has retained the
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`same expert, who has submitted a substantively-identical declaration as in the
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`Fitbit IPR. The Patent Owner should not require any discovery beyond that which
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`it may need in the Fitbit IPR. The Petition presents no new substantive issues
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`relative to the Fitbit IPR and does not seek to broaden the scope of the Fitbit IPR.
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`For the sake of efficiency, so long as the Fitbit Petitioner remains a party to
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`the Fitbit IPR, Petitioner will:
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`1.
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`2.
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`Adhere to all applicable deadlines in the Fitbit IPR;
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`Submit “consolidated” filings with the Fitbit Petitioner, as set forth
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`above in the statement of precise relief requested;
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`6
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`3.
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`Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`4. Refrain from requesting or reserving additional oral hearing time; and
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`5.
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`Assume an “understudy” role.
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`In short, Petitioner has provided more than ample justification as to why
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`joinder is appropriate.
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`B.
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`The Wahoo IPR Presents No New Grounds of Unpatentability
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`The Petition presents the same three grounds of unpatentability as those in
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`Fitbit’s IPR Petition. Moreover, Wahoo hereby agrees to withdraw any grounds the
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`Board denies in Fitbit’s IPR Petition. See Taiwan Semiconductor, IPR2014-00781,
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`Paper 5 at 4; SAP Am., IPR2014-00306, Paper 13 at 4. Because joinder will not
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`introduce any new prior art, expert declarations, or grounds of unpatentability into
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`the Fitbit IPR, joining Petitioner’s proceeding to the Fitbit IPR will not complicate
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`the substantive issues already pending in the Fitbit IPR.
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`C. No Impact on the Trial Schedule
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`Joinder will not impact the Board’s ability to complete the Fitbit IPR in a
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`timely manner, as Petitioner raises the same grounds against the same claims in the
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`Fitbit IPR. Further, because the Fitbit IPR has not yet been instituted, no
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`scheduling order has been entered. As such, joinder of this proceeding with the
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`7
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`Fitbit IPR will not require a change to any existing schedule, and this weighs in
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`favor of joinder.
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`D. How Briefing and Discovery May be Simplified
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`In an effort to simplify briefing and discovery, Petitioner agrees to adhere to
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`all applicable deadlines in the Fitbit IPR and coordinate all filings with the
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`Petitioner in the Fitbit IPR. Wahoo is willing to serve in a limited “understudy”
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`role to streamline discovery and briefing such that the Fitbit Petitioner will
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`maintain the lead role in the proceedings so long as it is a party to the proceedings.
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`Moreover, Wahoo shall coordinate with Fitbit regarding questioning at depositions
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`and at the oral hearing, which shall not to exceed the time allotted by the rules for
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`one party, or as otherwise agreed between Fitbit and Patent Owner or as ordered by
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`the Board. See Dell, IPR2013-00385, Paper 17 at 12; SAP Am., IPR2014-00306,
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`Paper 13 at 6.
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`
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`V. CONCLUSION
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`For the foregoing reasons, Wahoo respectfully requests the Board to institute
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`its Petition for Inter Partes Review and join this proceeding with Fitbit, Inc. v.
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`Blackbird Tech LLC, Case No. IPR2017-02012.
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`8
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`Dated: December 5, 2017
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`Respectfully submitted by:
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`/Matthew L. Cutler/
`MATTHEW L. CUTLER
`DOUGLAS A. ROBINSON
`HARNESS DICKEY & PIERCE, P.L.C.
`7700 Bonhomme Ave., Suite 400
`Clayton, MO 63105
`Telephone: (314) 726-7500
`Facsimile: (314) 726-7501
`mcutler@hdp.com
`drobinson@hdp.com
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`Attorneys for Wahoo Fitness, LLC.
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.105 and §
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`42.6(e), that service was made on the Patent Owner as detailed below.
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`Date of Service: December 5, 2017
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`Manner of Service: FedEx
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`Documents Served: Motion for Joinder
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`Persons Served: Patent Owner’s Address of Record
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`Blackbird Technologies LLC
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`One Boston Place, Suite 2600
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`Boston, MA 02108
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`Jeffry Smith
`Smith Law Office
`8517 Excelsior Drive, Suite 402
`Madison, WI 53717
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`Stamatios Stamoulis
`Stamoulis & Weinblatt LLC
`Two Fox Point Centre
`6 Denny Road, Suite 307
`Wilmington, DE 19809
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`/Matthew L. Cutler/
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