IPR2018-01209
`PATENT NO. 8,155,342
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`DAIMLER AG,
`
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`
`Patent Owner.
`
`
`
`Patent No. 8,155,342
`Filing Date: June 27, 2006
`Issue Date: April 10, 2012
`
`Inventor: Ira Marlowe
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`
`
`__________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`Case No. IPR2018-01209
`__________________________________________________________________
`
`
`
`
`
`
`PATENT NO. 8,155,342
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`DAIMLER AG,
`
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`
`Patent Owner.
`
`
`
`Patent No. 8,155,342
`Filing Date: June 27, 2006
`Issue Date: April 10, 2012
`
`Inventor: Ira Marlowe
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`
`
`__________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`Case No. IPR2018-01209
`__________________________________________________________________
`
`
`
`
`
`
`
`IPR2018-01209
`PATENT NO. 8,155,342
`
`I.
`
`LEGAL STANDARD
`
`Institution of the proceeding to which a party seeks joinder must occur prior
`
`to a request for joinder. See 35 U.S.C. § 315(c) (“If the Director institutes an inter
`
`partes review…”); see also 37 C.F.R. § 42.122(b) (“Any request for joinder must
`
`be filed…after the institution date of an inter partes review for which joinder is
`
`requested.”). “It is clear from both the statute and the rule that a request for joinder
`
`is appropriate only if a decision granting institution has been entered in the inter
`
`partes review for which joinder is requested.” Linear Tech. Corp. v. In-Depth Test
`
`LLC, Case No. IPR2015-01994, slip op. at 4, (P.T.A.B. Oct. 20, 2015) (Paper 7).
`
`II. THE MOTION MUST BE DENIED AS PREMATURE
`
`On June 6, 2018, Petitioner, Daimler AG (“DAG”) filed a petition
`
`requesting inter partes review (“1209-IPR”) of claims 49-57, 62-64, 66, 68, 70, 71,
`
`73-80, 83, 86-88, 94, 95, 97, 99-103, 106, 109-111, 113, 115, 120 (the “Challenged
`
`Claims”) of U.S. Patent No. 8,155,342 (the “’342 Patent”). Petitioner concurrently
`
`filed a motion to join a non-instituted proceeding, IPR2018-00544 (the “544-
`
`IPR”), submitting that the 1209-IPR and 544-IPR petitions are “substantively
`
`identical.” As set forth herein, Petitioner’s motion should be denied as premature
`
`because the motion requests joinder to a non-instituted petition.
`
`Petitioner concedes that the Board has not instituted the 544-IPR. Patent
`
`Owner filed a preliminary response to the 544-IPR petition on May 15, 2018,
`
`
`
`1
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`
`
`IPR2018-01209
`PATENT NO. 8,155,342
`
`making it likely that the Board will issue an institution decision on or around
`
`August 15, 2018. Petitioner contends that the joinder motion is timely based on a
`
`statement in a Board decision that prior authorization for a motion filed prior to
`
`one month after institution is not required. See Taiwan Semiconductor
`
`Manufacturing Co., Ltd. v. Zond, LLC, IPR2014-00781, Paper 5 at 3. Petitioner
`
`does not cite to any authority for the proposition that it is entitled to joinder to a
`
`petition which has not been instituted, as required by 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b). Accordingly, the motion for joinder must be denied as
`
`premature.
`
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION AND TO DENY JOINDER
`
`This petition is the 15th1 inter partes review challenge against the ’342
`
`Patent. DAG is the latest in a long line of petitioners seeking to impermissibly
`
`benefit from an extensive history of prior arguments and decisions at the expense
`
`of Patent Owner’s and the Board’s limited resources. No efficiencies will be
`
`gained by instituting another petition and allowing Petitioner to insert itself into the
`
`544-IPR. Patent Owner respectfully urges the Board to deny the request for
`
`
`1 The following IPR2016-00118 (Instituted Denied); IPR2016-00418
`(Terminated); IPR2016-00419 (Institution Denied); IPR2016-01445 (Terminated);
`IPR2016-01449 (Terminated); IPR2016-01473 (Institution Denied); IPR2016-
`01476 (Terminated); IPR2016-01533 (Terminated); IPR2016-01557 (Terminated);
`IPR2016-01560 (Terminated); IPR2018-00090 (Institution Denied); IPR2018-
`00544 (Pending); IPR2018-00926 (Pending); IPR2018-00927 (Pending); IPR2018-
`01209 (Pending)
`
`
`
`2
`
`
`
`IPR2018-01209
`PATENT NO. 8,155,342
`
`joinder and the underlying petition before Patent Owner and the Board waste
`
`additional resources.2
`
`Despite conceding that the 544-IPR and 1209-IPR petitions are substantively
`
`identical, Petitioner proposes participating in a limited-but-active role in the 544-
`
`IPR. Rather than commit to simplifying procedures for briefing and discovery,
`
`Petitioner states that it “does not anticipate that its presence will introduce any
`
`additional arguments, briefing or need for discovery” while retaining the right to
`
`do so. Mot. at 7-8. Petitioner apparently plans to take depositions and argue at
`
`oral hearing. Mot. at 8. Petitioner does not explain how it plans to “consolidate
`
`filings” and appears to retain the right to substantive briefing. See id. Petitioner’s
`
`commitment to refrain from raising any new grounds is illusory because Petitioner
`
`is already precluded from adding new grounds by the rules and statutes governing
`
`IPRs. That said, Petitioner does not waive its right to request authorization to file
`
`supplemental information. It is clear that Petitioner intends to retain an active role
`
`in the proceeding, which would unduly burden and unfairly prejudice Patent
`
`Owner. Patent Owner will incur additional costs and expend additional resources
`
`in defending its patent rights against a fifteenth challenge.
`
`
`2 As noted herein, Patent Owner intends to submit a preliminary response
`addressing General Plastic factors and additional reasons why the Board should
`deny institution. However, the Board is well-aware of the record of the 544-IPR
`and the related proceedings. Patent Owner respectfully requests the Board exercise
`its discretion to deny institution before the preliminary response becomes due.
`
`
`
`3
`
`
`
`IPR2018-01209
`PATENT NO. 8,155,342
`
`IV. PETITIONER HAS IDENTIFIED NO LEGITIMATE REASON FOR
`JOINDER
`
`Joinder should be denied because Petitioner fails to identify a legitimate
`
`basis to join the 544-IPR. Petitioner identifies overall commonality (i.e.,
`
`“substantially identical”) as a basis for meeting each factor relating to joinder,
`
`conceding that the 1209-IPR involves redundant grounds on the same prior art and
`
`same claims. However, commonality is not a legitimate reason for joinder.
`
`Petitioner has the burden of establishing entitlement to joinder and
`
`articulating a reason to join the proceeding. Kyocera Corp. v. Softview LLC, Case
`
`No. IPR2013-00004, Paper 15 at 2–3. For example, in Kyocera, the joining party
`
`expressed its belief that joinder was the only option to participate in the review of
`
`the challenged patents and that the petitioner’s reliance on the joining party’s
`
`expert’s testimony in the proceeding necessitated the joining party’s participation
`
`in any cross-examination of its expert. Here, Petitioner presents no such rationale.
`
`For instance, Petitioner does not argue that it was unaware of the 544-IPR prior art
`
`until the day of expiration of its one-year statutory period. Petitioner presents no
`
`reason why it is entitled to joinder.
`
`Petitioner asserts commonality between the 544-IPR and the 1209-IPR as a
`
`basis for meeting each of the four factors required in a motion for joinder.
`
`Commonality alone must not compel automatic joinder. Reasserting commonality
`
`to satisfy each independent factor renders Factor 1, and the analysis itself,
`
`
`
`4
`
`
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`IPR2018-01209
`PATENT NO. 8,155,342
`
`meaningless. Other than increasing expenses for Blitzsafe, Petitioner has
`
`identified no legitimate reason to join the 544-IPR. Without any legitimate reason
`
`to join the proceeding, the Board should exercise its discretion to deny this motion
`
`and deny institution of the petition.
`
`V. THE BOARD SHOULD DENY THE JOINDER MOTION AND DENY
`INSTITUTION IF THE 544-IPR IS DENIED INSTITUTION
`
`If the Board denies institution of the 544-IPR, the Board should also deny
`
`joinder and institution in the 1209-IPR. A petition cannot be joined to a petition
`
`that has been denied institution. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`(permitting joinder only to instituted proceedings). If the Board denies institution
`
`on the 544-IPR, the 1209-IPR should be denied for the same reasons because
`
`Petitioner admits that the petitions are substantively identical and involve the same
`
`claims, grounds, evidence, prior art, and arguments. Mot. at 7–8.
`
`VI. CONCLUSION
`
`For the reasons stated above, and any additional reasons the Board may
`
`deem relevant to the motion, Patent Owner respectfully requests denial of the
`
`motion in its entirety and denial of institution.
`
`
`
`
`
`
`
`Dated: July 6, 2018
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By:
`
`
`/Peter Lambrianakos/
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`BROWN RUDNICK LLP
`
`
`
`5
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`
`
`IPR2018-01209
`PATENT NO. 8,155,342
`
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: plambrianakos@brownrudnick.com
`
`
`
`
`
`6
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`
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`IPR2018-01209
`PATENT NO. 8,155,342
`
`CERTIFICATE OF SERVICE
`
`A copy of PATENT OWNER’S OPPOSITION TO PETITIONER’S
`
`MOTION FOR JOINDER has been served on Petitioner’s counsel of record as
`
`follows:
`
`James M. Glass (Reg. No. 46,729)
`jimglass@quinnemanuel.com
`Quinn Emanuel Urquhart &
`Sullivan LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`
`Sean T. Gloth (Reg. No. 75,316)
`seangloth@quinnemanuel.com
`Quinn Emanuel Urquhart &
`Sullivan, LLP
`1300 I Street NW, Suite 900
`Washington, DC 20005
`
`Carol Brush
`carolbrush@quinnemanuel.com
`Quinn Emanuel Urquhart &
`Sullivan, LLP
`1300 I Street NW, Suite 900
`Washington, DC 20005
`
`
`
`
`
`July 6, 2018
`
`
`
`
`
`
`
`
`
`By:
`
`
`Jeffrey S. Gerchick
`jeffgerchick@quinnemanuel.com
`Quinn Emanuel Urquhart &
`Sullivan, LLP
`1300 I Street NW, Suite 900
`Washington, DC 20005
`
`Richard Lowry (Reg. No. 70,306)
`richardlowry@quinnemanuel.com
`Quinn Emanuel Urquhart &
`Sullivan, LLP
`1300 I Street NW, Suite 900
`Washington, DC 20005
`
`
`
`/Peter Lambrianakos /
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`
`
`
`
`
`
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