IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`DAIMLER AG,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS,
`
`Patent Owner
`
`
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO INTER PARTES REVIEW OF IPR2018-00544
`
`Case No. IPR2018----
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`IPR of U.S. Patent No. 8,815,342
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`DAIMLER AG,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS,
`
`Patent Owner
`
`
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO INTER PARTES REVIEW OF IPR2018-00544
`
`Case No. IPR2018----
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`TABLE OF CONTENTS
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED ............................. 1
`
`II.
`
`STATEMENT OF MATERIAL FACTS .................................................... 2
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED .................. 4
`
`A.
`
`Legal Standard ....................................................................................... 4
`
`B.
`
`C.
`
`1.
`
`2.
`
`Petitioner’s Motion for Joinder is Timely ............................................. 4
`
`Each Factor Weighs in Favor of Joinder ............................................... 5
`
`Joinder is Appropriate and Petitioner Presents No New Grounds ........ 5
`
`Joinder Will Not Negatively Impact the 544 Proceeding Trial
`Schedule ................................................................................................ 6
`
`3.
`
`Procedures to Simplify Briefing and Discovery ................................... 7
`
`D.
`
`Joinder Will Not Prejudice the Parties to the 544 Proceeding .............. 9
`
`IV. CONCLUSION ................................................................................................ 9
`
`
`
`i
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Daimler AG (“DAG” or Petitioner) respectfully submits this Motion for
`
`Joinder, together with a petition (the “DAG Petition”) for inter partes review of
`
`U.S. Patent No. 8,155,342 (“the ’342 patent”) filed concurrently herewith,
`
`IPR2018----. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner
`
`requests institution of an inter partes review and joinder with the inter partes re-
`
`view proceeding IPR2018-00544 (“the ’544 proceeding”) filed by Jaguar Land
`
`Rover North America, LLC and Jaguar Land Rover Ltd. (collectively “Jaguar”),
`
`which was filed on January 29, 2018 and concerns the same ’342 patent. See ’544
`
`Proceeding at Petition. Petitioner’s motion is timely as the ’544 proceeding has
`
`not yet been instituted. See 37 C.F.R. § 42.122(b); Taiwan Semiconductor Manu-
`
`facturing Co., Ltd. v. Zond, LLC, IPR2014-00781, Paper 5 at 3 (“[P]rior authoriza-
`
`tion for filing a motion for joinder—prior to one month after the institution date of
`
`any inter partes review for which joinder is requested—is not required.”).
`
`Joinder will efficiently resolve the challenges to the ’342 patent in the ’544
`
`proceeding, and will neither impact the substantive issues or schedule in that pro-
`
`ceeding, nor prejudice the parties in the ’544 proceeding. The DAG Petition raises
`
`the same grounds of unpatentability as advanced in the ’544 Petition, challenges
`
`the same claims, and relies on the same prior art, arguments and evidence present-
`
`ed in Jaguar’s petition for inter partes review. Indeed, in an effort to avoid multi-
`
`
`
`1
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`plication of issues before the Board, the DAG Petition duplicates Jaguar’s argu-
`
`ments and relies upon the same supporting expert declaration. In addition, Peti-
`
`tioner explicitly agrees to consolidated discovery and briefing as described below,
`
`and is willing to accept a limited role with Jaguar’s counsel acting as the lead
`
`counsel as long as Jaguar remains in the proceeding.
`
`Accordingly, Petitioner submits that joinder is appropriate because it will not
`
`prejudice the parties or impact the substantive issues and schedule in the ’544 pro-
`
`ceeding, while efficiently resolving in a single proceeding the question of the ’342
`
`patent’s validity.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1. The ’342 patent is entitled “Multimedia Device Integration” and lists
`
`Ira Marlowe as inventor. The ’342 patent was issued on April 10, 2012. Blitzsafe
`
`Texas, LLC (“Patent Owner”) is believed to have all rights, title, and interest in
`
`’342 patent.
`
`2. The ’342 patent is asserted in the following pending district court cas-
`
`es by the Patent Owner that may be affected by a decision in this proceeding:
`
`Blitzsafe Texas, LLC v. Jaguar Land Rover Ltd., et al., Case No. 2:2017-cv-00424
`
`(E.D. Tex.); Blitzsafe Texas, LLC v. Robert Bosch LLC, et al., Case No. 2:2017-cv-
`
`00105 (E.D. Tex.); Blitzsafe Texas, LLC v. Bayerische Motoren Werke AG, et al.,
`
`Case No. 2:2017-cv-00418 (E.D. Tex.); Blitzsafe Texas, LLC v. Zhejiang Geely
`
`
`
`2
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`Holding Grp. Co., Ltd. et al., Case No. 2:2017-cv-00420 (E.D. Tex.); Blitzsafe
`
`Texas, LLC v. Subaru Corp., et al., Case No. 2:2017-cv-00421 (E.D. Tex.);
`
`Blitzsafe Texas, LLC v. Daimler AG, et al., Case No. 2:2017-cv-00422 (E.D. Tex.);
`
`Blitzsafe Texas, LLC v. Mazda Motor Corp., et al., Case No. 2:2017-cv-00423
`
`(E.D. Tex.); Blitzsafe Texas, LLC v. Mitsubishi Electric Corp., et al., Case No.
`
`2:2017-cv-00430 (E.D. Tex.).
`
`3. The ’342 patent was further asserted in the following district court
`
`cases that are no longer pending: Blitzsafe Texas, LLC v. Honda Motor Co., Ltd.,
`
`et al., Case No. 2:2015-cv-01274 (E.D. Tex.); Blitzsafe Texas, LLC v. Hyundai
`
`Motor Co., et al., Case No. 2:2015-cv-01275 (E.D. Tex.); Blitzsafe Texas, LLC v.
`
`Nissan Motor Co., Ltd., et al., Case No. 2:2015-cv-01276 (E.D. Tex.); Blitzsafe
`
`Texas, LLC v. Toyota Motor Corp., et al., Case No. 2:2015-cv-01277 (E.D. Tex.);
`
`Blitzsafe Texas, LLC v. Volkswagen Grp. of Am., Inc., et al., Case No. 2:2015-cv-
`
`01278 (E.D. Tex.).
`
`4. The ’342 patent was subject to the following inter partes review pro-
`
`ceedings that are no longer pending: IPR2016-00118, IPR2016-00418, IPR2016-
`
`00419,
`
`IPR2016-01445,
`
`IPR2016-01449,
`
`IPR2016-01473,
`
`IPR2016-01476,
`
`IPR2016-01533, IPR2016-01557, IPR2016-01560, IPR2018-0090.
`
`5. The ’342 patent is subject to the following pending inter partes re-
`
`view proceedings: IPR2018-00544, IPR2018-00926, IPR2018-00927.
`
`
`
`3
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
`
`inter partes review petition to an instituted inter partes review proceeding. See 35
`
`U.S.C. § 315(c). Any request for joinder must be filed no later than one month af-
`
`ter the institution date of any inter partes review for which joinder is requested.
`
`See 37 C.F.R. § 42.122(b). In deciding whether to exercise its discretion, the
`
`Board considers factors including: (1) the reasons why joinder is appropriate; (2)
`
`whether the new petition presents 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 Macronix Int’l Co. v. Span-
`
`sion, IPR2014-00898, Paper 13, at 4 (PTAB Aug. 13, 2014) (citing Kyocera Cor-
`
`poration v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24, 2013));
`
`Perfect World Entertainment, Inc. v. Uniloc USA, Inc., et al., IPR2015-01026, Pa-
`
`per 10 at 4 (PTAB Aug. 3, 2015); Mylan Pharmaceuticals Inc. v. Novartis AG, et
`
`al., IPR2015-00265, Paper 17 at 4 (PTAB April 10, 2015); Ciena Corp., et al. v.
`
`Capella Photonics, Inc., IPR2015-01958, Paper 11 (PTAB April 1, 2016).
`
`B. Petitioner’s Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed before institution of the
`
`’544 proceeding. See 37 C.F.R. § 42.122(b). The one-year bar set forth in
`
`
`
`4
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`37 C.F.R. § 42.101(b) does not apply when a petition is filed concurrently with a
`
`motion for joinder, as is currently the case here with the DAG Petition, although
`
`the filing of this motion and accompanying petition on June 6th is also timely under
`
`the one-year bar. Id.
`
`C. Each Factor Weighs in Favor of Joinder
`
`Each of the four factors to be considered by the Board in ruling on this mo-
`
`tion weighs in favor of joinder. As explained in further detail below, joinder is
`
`proper because the DAG Petition does not present any new grounds of unpatenta-
`
`bility, is substantively identical to the Jaguar petition, will have minimal impact, if
`
`any, on the trial schedule, briefing and discovery in the ’544 proceeding, and al-
`
`lows all issues to be resolved in a single proceeding before the Board. Petitioner
`
`further agrees to take on a limited role in the proceeding.
`
`1. Joinder is Appropriate and Petitioner Presents No New
`Grounds
`
`Joinder with the ’544 proceeding is appropriate because the DAG Petition
`
`involves the same patent, challenges the same claims, and relies on the same prior
`
`art, arguments and expert declaration presented in the ’544 Proceeding.1 Im-
`
`portantly, the DAG Petition does not raise any new grounds of unpatentability.
`
`
`1 The DAG Petition is submitted with the same Exhibits as those submitted with
`
`the ’544 proceeding.
`
`
`
`5
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`Further, the DAG Petition relies on the same grounds from the Jaguar petition and
`
`is substantively identical to the Jaguar Petition. Indeed, the substantive challenges
`
`presented in the DAG Petition are copied verbatim from the Jaguar petition and re-
`
`ly on the same supporting expert declaration. The primary differences between the
`
`DAG Petition and the Jaguar petition relate to minor formalities associated with
`
`the parties involved with filing the petitions and references to related proceedings.
`
`The DAG Petition presents the same arguments, expert declaration, and prior art
`
`presented in the Jaguar petition; it does not add to or alter any argument that has
`
`already been considered by the Board. Accordingly, because these proceedings are
`
`substantively identical, joining this proceeding with the ’544 proceeding is appro-
`
`priate and allows the Board to efficiently resolve the instituted grounds in a single
`
`proceeding. See Sierra Wireless America, Inc. et al v. M2M Solutions LLC,
`
`IPR2016-01073, Paper 17 at 8 (PTAB September 29, 2016) (quoting 157 CONG.
`
`REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office antici-
`
`pates that joinder will be allowed as of right—if an inter partes review is instituted
`
`on the basis of a petition, for example, a party that files an identical petition will be
`
`joined to that proceeding, and thus allowed to file its own briefs and make its own
`
`arguments.”)) (emphasis original).
`
`2. Joinder Will Not Negatively Impact the ’544 Proceeding Trial
`Schedule
`
`35 U.S.C. § 316(a)(11) provides that “the final determination in an inter
`
`
`
`6
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`partes review be issued not later than one year after the date on which the Director
`
`notices the institution of a review.” See also 37 C.F.R. § 42.100(c). Joinder in this
`
`case will not impact this mandate. While Patent Owner has filed a preliminary re-
`
`sponse on May 15, 2018 (Paper 7), as explained above, the DAG Petition is sub-
`
`stantively identical with respect to the instituted grounds contained in the Jaguar
`
`petition. Thus, there are no new issues for Patent Owner to address and Patent
`
`Owner will not be required to file additional responses or arguments. Consequent-
`
`ly, the Patent Owner response will also not be impacted; joining Petitioner to this
`
`proceeding will not require any additional analysis by Patent Owner beyond what
`
`they will already undertake to respond to the Jaguar petition. Also, since the DAG
`
`Petition relies on the same expert declaration, only a single deposition is needed
`
`for the proposed joined proceeding in connection with the Jaguar petition and the
`
`DAG Petition. For efficiency’s sake, if joined, Petitioner further agrees to consoli-
`
`dated discovery with Jaguar’s counsel acting as the lead counsel so long as Jaguar
`
`remains in the proceeding.
`
`Accordingly, joinder of these proceedings will not negatively impact the
`
`’544 Proceeding trial schedule.
`
`3. Procedures to Simplify Briefing and Discovery
`
`As discussed above, Petitioner offers no new grounds for invalidity and Peti-
`
`tioner does not anticipate that its presence will introduce any additional arguments,
`
`
`
`7
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`briefing or need for discovery. As long Jaguar remains an active participant in the
`
`’544 Proceeding, Petitioner is willing to accept a limited role and agree to: (1) con-
`
`solidate filings with Jaguar; (2) refrain from raising any new grounds not already
`
`considered by the Board in the ’544 Proceeding; (3) be bound by any agreement
`
`between Patent Owner and Jaguar concerning discovery and/or depositions; (4)
`
`limit any direct, cross-examination or redirect time beyond that permitted for Jagu-
`
`ar under either 37 C.F.R. § 42.53 or any agreement between Jaguar and the Patent
`
`Owner, such that Petitioner’s participation in the ’544 proceeding does not result in
`
`any additional time being required for any deposition; and (5) limit any presenta-
`
`tion at oral hearing to unused time previously allocated to Jaguar. By accepting
`
`this limited role, both the Board and parties will be able to avoid any duplication of
`
`efforts. The Board has consistently granted joinder motions allowing Petitioners to
`
`take a similar role as that proposed by Petitioner in this proceeding.2 Accordingly,
`
`Petitioner requests that the Board grant Petitioner’s motion for joinder, particularly
`
`
`2 See, e.g., Ciena Corp., et al. v. Capella Photonics, Inc., IPR2015-01958, Paper
`
`11 (PTAB April 1, 2016); Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-
`
`01376, Paper 12 at 16-20 (PTAB Sept. 29, 2015); Ciena Corp., et al. v. Capella
`
`Photonics, Inc., IPR2015-00894, Paper 12 (PTAB Sept. 22, 2015); Dell Inc. v.
`
`Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 (PTAB July 29,
`
`2013).
`
`
`
`8
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`in light of the foregoing procedural safeguards and limited role that Petitioner is
`
`willing to accept in this proceeding.
`
`D. Joinder Will Not Prejudice the Parties to the ’544 Proceeding
`
`Patent Owner is not prejudiced as all of the issues raised by Petitioner are al-
`
`ready known to Patent Owner. Further, Patent Owner is not expected to incur any
`
`additional burden as a result of this joinder. This is particularly true in light of the
`
`limited role that Petitioner proposes to undertake in the joined proceedings. Join-
`
`der will allow the Board to address the same patent validity questions in a single
`
`proceeding within a statutory deadline without adding costs or burdens on any of
`
`the parties.
`
`IV. CONCLUSION
`
`Based on the factors outlined above, Petitioner requests the Board grant the
`
`DAG Petition for Inter Partes Review of U.S. Patent No. 8,155,342 (IPR2018----)
`
`and grant joinder with the Jaguar Land Rover North America, LLC and Jaguar
`
`Land Rover Ltd. v. Blitzsafe Texas, LLC, IPR2018-00544 proceeding.
`
`
`
`Date: June 6, 2018
`
`
`Respectfully submitted,
`
`By: /s/ James M. Glass
`James M. Glass (Reg. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`
`
`
`9
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`T: (212) 849-7000
`F: (212) 849-7100
`jimglass@quinnemanuel.com
`
`Attorney for Petitioner Daimler AG.
`
`
`
`10
`
`
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned “MOTION FOR
`
`JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`TO INTER PARTES REVIEW OF IPR2018-00544” was served in its entirety on
`
`June 6, 2018, upon the following parties:
`
`Attorney of Record for U.S. Patent No. 8,155,342, via FedEx Overnight
`Delivery:
`
`Ira M. Marlowe
`Blitzsafe of America, Inc.
`33 Honeck Street
`Englewood, NJ 07631
`
`
`
`
`
`
`
`
`
`
`Peter Lambrianakos
`Alfred R. Fabricant
`Vincent J. Rubino, III
`Enrique W. Iturralde
`Brown Rudnick LLP
`7 Times Square
` New York, NY 10036
`
`
`
`Counsel for Patent Owner in IPR2018-00544, via electronic mail:
`
`
`
`
`
`
`
`
`
`
`
`
`Peter Lambrianakos (Reg. No. 58,279)
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Tel. 212-209-4800
`Fax. 212-209-4801
`plambrianakos@brownrudnick.com
`
`
`Counsel for Petitioners in IPR2018-00544, via electronic mail:
`
`Matthew J. Moore (Reg. No. 42,012)
`matthew.moore@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`202-637-2200; 202-637-2201 (Fax)
`
`
`
`
`
`
`1
`
`
`
`
`
`Date: June 6, 2018
`
`IPR2018----
`IPR of U.S. Patent No. 8,815,342
`
`Respectfully submitted,
`
`By: /s/ James M. Glass
`James M. Glass (Reg. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`T: (212) 849-7000
`F: (212) 849-7100
`jimglass@quinnemanuel.com
`
`Attorney for Petitioner Daimler AG.
`
`
`
`
`
`2
`
`
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
