`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`NIDEC CORPORATION AND
` AMERICAN HONDA MOTOR CO., INC.
`
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`
`Patent Owner
`
`________________
`
`Case No. IPR2018-00597
`U.S. Patent No. 7,067,952
`Title: Stator Assembly Made from a Molded
`Web of Core Segments and Motor Using Same
`
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.122(b) TO RELATED
`INTER PARTES REVIEW IPR2017-01497
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I. Statement of Precise Relief Requested ................................................................ 1
`
`II.
`
`Statement of Material Facts and Related Proceedings ..................................... 2
`
`III. Statement of Reasons for Relief Requests ....................................................... 3
`
`A. Legal Standard .................................................................................................. 3
`
`B. Petitioners’ Motion for Joinder is Timely ........................................................ 4
`
`C. Each Factor Weighs in Favor of Joinder .......................................................... 4
`
`1. Joinder is Appropriate ................................................................................... 4
`
`2. The Petition Presents No New Grounds of Unpatentability ......................... 4
`
`3. Joinder Will Not Impact the Toyota IPR Trial Schedule .............................. 5
`
`4. Briefing and Discovery Will Be Simplified .................................................. 5
`
`IV. Conclusion ........................................................................................................ 7
`
`
`
`
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`- i -
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`
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Kyocera Corp. v. Softview LLC,
`
`Case No. IPR2013-00004 (PTAB Apr. 24, 2013) (Paper 15) ......................... 4
`
`Mylan Pharmaceuticals Inc. v. Dr. Falk Pharma GmbH,
`
`Case No. IPR2016-01386 (PTAB Nov. 30, 2016) (Paper 9) .......................... 7
`
`Mylan Pharms. Inc. v. Novartis AG,
`
`Case No. IPR2015-00268 (PTAB Apr. 10, 2015) (Paper 17) ......................... 6
`
`Samsung Elecs., Co., Ltd., et al. v. Raytheon Co.,
`
`Case No. IPR2016-00962 (PTAB Aug. 24, 2016) (Paper 12) ....................2, 4
`
`Sony Corp. v. Memory Integrity, LLC,
`
`Case No. IPR2015-01353 (PTAB Oct. 15, 2015) (Paper 11) .....................5, 7
`Statutes
`
`35 U.S.C. § 315(c) .................................................................................................1, 3
`Regulations
`
`37 C.F.R. § 42.122(b) ....................................................................................... 1, 3, 4
`
`
`- ii -
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`
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`
`
`I.
`
`Statement of Precise Relief Requested
`
`Petitioners Nidec Corporation (“Nidec”) and American Honda Motor Co.,
`
`Inc. (“Honda”) respectfully submit this Motion for Joinder together with a Petition
`
`for Inter Partes Review of U.S. Patent No. 7,067,952, filed contemporaneously
`
`herewith. On January 17, 2018, the Board instituted inter partes review of claims
`
`10–12 of U.S. Patent No. 7,067,952 (“the ’952 Patent”) in Toyota Motor
`
`Corporation and Denso Corporation v. Intellectual Ventures II LLC, Case No.
`
`IPR2017-01497 (“the Toyota IPR”). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
`
`§ 42.122(b), Nidec and Honda request institution of inter partes review for claims
`
`10–12 of the ’952 Patent, and request joinder with the Toyota IPR. Petitioners
`
`seek institution and joinder of only claims and grounds of IPR2017-01497 the
`
`Board instituted. For claims 11 and 12 of Ground 1 in IPR2017-01497 not
`
`instituted, petitioners nonetheless kept the discussions of them in the petition and
`
`expert declaration to be consistent with IPR2017-01497 and to provide basis for
`
`later discussions of certain prior art in Grounds 2 and 3.
`
`Nidec and Honda’s request for joinder is timely, and their Petition is
`
`substantively identical to the Petition in the Toyota IPR (Case No. IPR2017-01497
`
`(Paper 3)). Nidec and Honda propose the same grounds for unpatentability that
`
`were presented, and instituted on, in the Toyota IPR, based on the same prior art.
`
`Joinder will streamline discovery and briefing, and will allow for efficient review
`
`- 1 -
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`
`
`
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`of the ’952 Patent, without undue burden on the parties to the Toyota IPR. As the
`
`Board has noted, 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 Elecs., Co., Ltd., et al. v. Raytheon Co., Case No.
`
`IPR2016-00962, slip op. at 9 (PTAB Aug. 24, 2016) (Paper 12) (internal
`
`quotations and citations omitted) (emphasis in the original).
`
`II.
`
`Statement of Material Facts and Related Proceedings
`
`1.
`
`On March 20, 2017, Intellectual Ventures II LLC (“IV”) filed a
`
`complaint with the International Trade Commission (“ITC”), alleging that Nidec,
`
`Honda, and other parties infringe the ’952 Patent (“the 337-TA-1052
`
`Investigation”). The investigation was instituted on April 28, 2017.
`
`2.
`
`Toyota Motor Corporation and Denso Corporation filed a petition
`
`for inter partes review of the ’952 Patent on June 9, 2017 (“the Toyota Petition”),
`
`challenging the patentability of claims 10–12 of the ’952 Patent. Toyota Motor
`
`Corporation and Denso Corporation v. Intellectual Ventures II LLC. Case No.
`
`IPR2017-01497 (Paper 3).
`
`3.
`
`On September 8, 2017, the ITC granted a motion that terminated the
`
`337-TA-1052 investigation.
`
`- 2 -
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`4.
`
`On September 5, 2017, IV filed another action at the ITC, again
`
`alleging that Nidec, Honda, and other parties infringe the ‘952 Patent (“the 337-
`
`TA-1073 Investigation”).
`
`5.
`
`On January 17, 2018, the Board instituted a trial in the Toyota IPR,
`
`on all challenged claims (claims 10-12) in the ‘952 Patent. Case No. IPR2017-
`
`01497 (Paper 9).
`
`III.
`
`Statement of Reasons for Relief Requests
`
`A. Legal Standard
`
`The Board may join as a party to an instituted inter partes review a party
`
`who has properly filed a petition for inter partes review that warrants institution.
`
`See 35 U.S.C. § 315(c). A motion requesting joinder must be filed no later than
`
`one month after the date of institution for the inter partes review to which the party
`
`seeks joinder. See 37 C.F.R. § 42.122(b).
`
`The Board has explained that a motion for joinder should:
`
`(1) set forth reasons why joinder is appropriate; (2)
`identify any new grounds of unpatentability asserted in
`the petition; (3) explain what impact (if any) joinder
`would have on the trial schedule for the existing review;
`and (4) address specifically how briefing and discovery
`may be simplified.
`
`- 3 -
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`
`
`
`
`Samsung Elecs., Case No. IPR2016-00962, slip op. at 5 (citing Kyocera Corp. v.
`
`Softview LLC, Case No. IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`
`(Paper 15)).
`
`B.
`
`Petitioners’ Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
`
`January 17, 2018 institution date of the Toyota IPR. See 37 C.F.R. § 42.122(b).
`
`C. Each Factor Weighs in Favor of Joinder
`
`1.
`
`Joinder is Appropriate
`
`The Petition is substantively identical to the Toyota Petition, presenting the
`
`same grounds of rejection, based on the same evidence and supporting expert
`
`declaration, as in the Toyota Petition. The only difference is that Nidec and Honda
`
`rely solely on the grounds from the Toyota Petition that the Board instituted on
`
`January 17, 2018. Because the Board has already instituted on and will be
`
`considering the same issues in the Toyota IPR, good cause exists to efficiently
`
`resolve all grounds in a single proceeding. This factor therefore weighs in favor of
`
`joinder.
`
`2.
`
`The Petition Presents No New Grounds of Unpatentability
`
`The Petition does not present any new grounds of unpatentability. Further,
`
`the Petition presents the same arguments and supporting evidence instituted on in
`
`the Toyota Petition. This factor weighs in favor of joinder.
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`- 4 -
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`3.
`
`Joinder Will Not Impact the Toyota IPR Trial Schedule
`
`Because the Petition is substantively identical to the Toyota Petition, there
`
`are no new issues for IV to address. See Sony Corp. v. Memory Integrity, LLC,
`
`Case No. IPR2015-01353, slip op. at 6 (PTAB Oct. 15, 2015) (Paper 11) (granting
`
`IPR and motion for joinder where “joinder should not necessitate any additional
`
`briefing or discovery from Patent Owner beyond that already required in [the
`
`original IPR].”). Without any new issues presented, there is no reason to delay or
`
`alter the trial schedule already present in the Toyota IPR, and Nidec and Honda
`
`consent to the existing trial schedule. Both the previously-filed Patent Owner
`
`Preliminary Response and the upcoming Patent Owner Response in the Toyota IPR
`
`would be unaffected by joinder, because the issues are substantively identical to
`
`the issues of the Toyota Petition. See Patent Owner’s Preliminary Response, Case
`
`No. IPR2017-001497 (Paper 8). IV will not be required to provide any additional
`
`analysis or arguments.
`
`Also, because the Petition relies on the same expert and a substantively
`
`identical declaration, only a single deposition is needed for the proposed joined
`
`proceeding. This factor weighs in favor of joinder.
`
`4.
`
`Briefing and Discovery Will Be Simplified
`
`Nidec and Honda agree to take an “understudy” role in the joined
`
`proceeding, absent termination of the original petitioners, Toyota and Denso, as
`
`- 5 -
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`
`
`
`
`parties to the proceeding. In particular, Nidec and Honda agree that, in the joined
`
`proceeding, the following conditions shall apply so long as Toyota and Denso
`
`remain active parties, as previously approved by the Board in similar
`
`circumstances:
`
`a)
`
`all filings by Nidec and Honda in the joined proceeding be
`
`consolidated with the filings of Toyota and Denso, unless a filing
`
`solely concerns issues that do not involve Toyota or Denso;
`
`b)
`
`Nidec and Honda 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 Toyota or Denso;
`
`c)
`
`Nidec and Honda shall be bound by any agreement between IV,
`
`Toyota, and Denso concerning discovery and/or depositions; and
`
`d)
`
`Nidec and Honda, at deposition, shall not receive any direct, cross
`
`examination or redirect time beyond that permitted for Toyota and
`
`Denso in this proceeding alone under either 37 C.F.R. § 42.53 or by
`
`agreement between IV, Toyota, and Denso.
`
`See Mylan Pharms. Inc. v. Novartis AG, Case No. IPR2015-00268, slip op. at 5–6
`
`(PTAB Apr. 10, 2015) (Paper 17) (finding that the same proposed limitations “are
`
`consistent with the ‘understudy’ role that Petitioner agrees to assume, as well as
`
`- 6 -
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`
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`Petitioner’s assertion that its presence would not require introducing any additional
`
`arguments, briefing, or discovery.”).
`
`Nidec and Honda would assume a primary role only if Toyota and Denso
`
`ceased to participate in the proceeding. The Board has consistently found 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., Case No. IPR2015-
`
`01353, slip op. at 7; see also Mylan Pharmaceuticals Inc. v. Dr. Falk Pharma
`
`GmbH, Case No. IPR2016-01386, slip op. at 6 (PTAB Nov. 30, 2016) (Paper 9).
`
`IV. Conclusion
`
`Nidec and Honda respectfully request that the Board institute Nidec and
`
`Honda’s concurrently filed Petition for Inter Partes Review of U.S. Patent No.
`
`7,067,952, and grant joinder with the Toyota Motor Corporation and Denso
`
`Corporation v. Intellectual Ventures II LLC., Case No. IPR2017-01497
`
`proceeding.
`
`
`
`
`
`
`Dated: February 15, 2018
`
`
`
`Respectfully submitted,
`
`/John Flock/
`John Flock
`Registration No. 39,670
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: (212) 425-7200
`
`- 7 -
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`
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`
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`
`
`Fax: (212) 425-5288
`jflock@andrewskurthkenyon.com
`Lead Counsel for Nidec Corporation
`
`/John Caracappa/
`John Caracappa
`Registration No. 43,532
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036-1795
`Tel: (202) 429-6267
`Fax: (202) 429-3902
`jcaracap@steptoe.com
`Lead Counsel for American Honda Motor
`Co., Inc.
`
`
`
`- 8 -
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`
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that on February 15, 2018, true and correct
`
`copies of the foregoing MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`
`37 C.F.R. § 42.122(b) TO RELATED INTER PARTES REVIEW IPR2017-
`
`01497 was served in its entirety on the following parties via FedEx Express® or
`
`Express Mail:
`
`Knobbe Martes Olson & Bear LLP
`2040 Main Street
`Fourteenth Floor
`Irvine, CA 92614
`
`
`With a courtesy copy to the Patent Owner at the purported address according
`
`to the assignment records of the United States Patent and Trademark Office:
`
`Intellectual Ventures II LLC
`3150 139th Avenue
`Building 4
`Bellevue, Washington 98005
`
`
`
`Dated: February 15, 2018
`
`
`
`/John Flock/
`John Flock
`Registration No. 39,670
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: (212) 425-7200
`Fax: (212) 425-5288
`jflock@andrewskurthkenyon.com
`Lead Counsel for Nidec Corporation
`
`
`- 9 -
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