Paper No. 8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DAIMLER AG,
`Petitioner
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`v.
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`BLITZSAFE TEXAS,
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`Patent Owner
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`
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`REPLY IN FURTHER SUPPORT OF 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. IPR2018-01209
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`DAIMLER AG,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS,
`
`Patent Owner
`
`
`
`REPLY IN FURTHER SUPPORT OF 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. IPR2018-01209
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`TABLE OF CONTENTS
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`I.
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`JOINDER WILL EFFICIENTLY RESOLVE THE TWO
`PROCEEDINGS AND NOT IMPACT THE ISSUES OR
`PREJUDICE THE PARTIES ....................................................................... 2
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`A.
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`Joinder is Appropriate and Petitioner Presents No New Grounds ........ 2
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`B.
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`Joinder Will Not Negatively Impact the ’544 Trial Schedule &
`Will Simplify Briefing and Discovery .................................................. 3
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`II.
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`THE JOINDER MOTION IS TIMELY ...................................................... 5
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`III. CONCLUSION ................................................................................................ 5
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`i
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`Patent Owner (“PO”) proffers several arguments in opposition to Petitioner’s
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`motion for joinder. PO’s primary complaint appears to be that Petitioner intends to
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`take a “limited-but-active” role in the IPR2018-00544 (“the ’544 proceeding”). This
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`is incorrect—Petitioner will take a limited role in the petition as required by the
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`rules, and commits to a secondary role to Jaguar, petitioner in the ’544 proceeding.
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`Jaguar will be lead counsel and will speak for the parties. Petitioner will not seek
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`anything not provided by the rules—Petitioner will not seek additional or separate
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`briefing, additional discovery, separate depositions, and will commit to the schedule
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`in that case. On this basis alone, joinder is appropriate.
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`PO also argues that the multiple IPRs filed against the challenged patent
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`somehow weighs against joinder. This, however, is irrelevant, and PO cites no
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`authority to the contrary. Indeed, the only case PO cites on this point—General
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`Plastic—simply does not apply here, as General Plastic did not deal with joinder
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`(and, as set forth in the Petition, the General Plastic factors weigh in favor of
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`institution). See ’544 Petition, Paper 2, at Section VIII.
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`PO also argues that joinder is premature as the underlying proceeding has not
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`been instituted. Opp. at 1-2. However, the Board routinely grants joinder in such
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`circumstances. PO further argues that despite the fact that the two proceedings are
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`substantially identical, “commonality is not a legitimate reason for joinder,” and
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`Petitioner has failed to identify any other legitimate reason for joinder. Id. at 4. As
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`1
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`explained in the opening brief, each of the Board’s factors counsel for joinder. Mot.
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`at 5. Specifically, both proceedings involve the same grounds of unpatentability,
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`challenge the same claims, and rely upon the same prior art, and joinder will aid in
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`and simplify briefing, discovery and the trial schedule. Id. at 5-9.
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`I.
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`JOINDER WILL EFFICIENTLY RESOLVE THE TWO
`PROCEEDINGS AND NOT IMPACT THE ISSUES OR
`PREJUDICE THE PARTIES
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`PO argues that Petitioner has failed to identify a legitimate reason for joinder.
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`Opp. at 4-5.1 This is incorrect. Joinder in this case would increase efficiency and
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`conserve Board and party resources; it would not prejudice PO. The Board considers
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`four factors in deciding whether to exercise its discretion to grant joinder: (1) the
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`reasons why joinder is appropriate; (2) whether the new petition presents any new
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`grounds of unpatentability; (3) what impact, if any, joinder would have on the trial
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`schedule for the existing review; and (4) how briefing and discovery may be
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`simplified. Perfect World Entm’t, Inc., v. Uniloc USA, Inc. et al., IPR2015-01026,
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`Paper 10 at 4 (P.T.A.B. Aug. 3, 2015). Each of these factors counsel for joinder and
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`provide a legitimate basis for such a ruling.
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`A.
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`Joinder is Appropriate and Petitioner Presents No New Grounds
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`1 PO also argues that if the Board denies institution of the ’544 Petition, joinder and
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`institution of the present Petition should be denied as well. Opp. at 5.
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`2
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`As admitted by the PO, this Petition involves the same patent, challenges the
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`same claims, and relies on the same prior art, arguments and expert declaration
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`presented in the ’544 proceeding. Opp. at 4. Importantly, the Petition does not raise
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`new grounds of unpatentability and relies upon the same grounds from the ’544
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`Petition—i.e., it is substantively identical to the ’544 Petition. Mot. at 5-6. Indeed,
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`the substantive challenges presented in the Petition are recited verbatim from the
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`’544 Petition and rely upon the same supporting expert declaration. Id. As
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`Petitioner’s present Petition and the ’544 Petition are substantively identical, joining
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`this proceeding with the ’544 proceeding is appropriate and allows the Board to
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`efficiently resolve the instituted grounds in a single proceeding.2
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`B.
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`Joinder Will Not Negatively Impact the ’544 Trial Schedule &
`Will Simplify Briefing and Discovery
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`As the Petition is substantively identical to the ’544 Petition, there are no new
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`issues and PO will not be required to file additional responses. Also, since the
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`present Petition relies on the same expert declaration, only a single deposition is
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`2 See Sierra Wireless America, Inc. et al. v. M2M Solutions LLC, IPR2016-01073,
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`Paper 17 at 8 (P.T.A.B. Sept. 29, 2016) (“The Office anticipates that joinder will
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`be allowed as of right—if an inter partes review is instituted on the basis of a
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`petition, for example, a party that files an identical petition will be joined to that
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`proceeding, and thus allowed to file its own briefs and make its own arguments.”).
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`3
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`needed.
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`In opposition, PO asserts joinder will not simplify proceedings because
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`Petitioner has not expressly waived its right to introduce additional arguments,
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`briefing or discovery. Opp. at 3 (“Petitioner intends to retain an active role”). PO’s
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`assertion is incorrect. First, as PO admits, “Petitioner is already precluded from
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`adding new grounds by the rules and statutes governing IPRs.” Id. Second,
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`Petitioner stated in the opening brief it would take a junior role. Mot. at 8.
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`Thus, Petitioner is not seeking the “active” role that PO suggests. To the
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`extent there is any confusion, PO commits, as it did in its Motion, to Jaguar serving
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`as lead counsel—counsel for Jaguar will speak for the parties. PO will not seek
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`additional or separate briefs, nor will it seek separate modifications to the schedule,
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`a separate hearing, or any additional depositions beyond what is requested by Jaguar.
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`The Board has consistently granted joinder allowing Petitioners to take a
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`similar role as that proposed here.3 And PO fails to present any Board decision
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`denying a motion for joinder in which the petitioner seeks to take such a role in the
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`proceedings. Accordingly, Petitioner’s proposed procedural safeguards and limited
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`3 See, e.g., Ciena Corp., et al. v. Capella Photonics, Inc., IPR2015-01958, Paper
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`11 at 2 (P.T.A.B. April 1, 2016); Sony Corp., et al. v. Memory Integrity, LLC,
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`IPR2015-01376, Paper 12 at 16-20 (P.T.A.B. Sept. 29, 2015).
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`4
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`role supporting granted its motion to join the ’544 Proceedings.
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`II. THE JOINDER MOTION IS TIMELY
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`PO argues that Petitioner’s motion should be denied as premature because it
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`requests joinder to a non-instituted petition. Opp. at 1-2 (citing Linear Tech. Corp.
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`v. In-Depth Test LLC, IPR2015-01994, Paper 7 at 4 (P.T.A.B. Oct. 20, 2015)).
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`However, the Board has expressly rejected PO’s cited precedent and routinely grants
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`motions for joinder prior to institution. See Blue Coat Sys., Inc. v. Finjan, Inc.,
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`IPR2016-00480, Paper 9 at 7 (P.T.A.B. June 24, 2016) (“The plain language of the
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`rule does not forbid a request for joinder that is filed before the inter partes review
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`is instituted.”); Samsung Bioepis Co., Ltd. v. Genentech, Inc., IPR2017-02140, Paper
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`11 at 4 (P.T.A.B. Feb. 22, 2018) (granting motion for joinder filed before
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`institution); LG Elec., Inc. v. Innovative Display Techs. LLC, IPR2015-00493, Paper
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`10 at 4 (P.T.A.B. July 15, 2015) (granting motion for joinder filed before institution);
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`Taiwan Semiconductor Mfg. Co., Ltd. v. Zond, LLC, IPR2014-00781, Paper 5 at 3-
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`4 (P.T.A.B. May 29, 2014) (rejecting argument). The Board should do so here as
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`well.
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`III. CONCLUSION
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`Because PO has failed to rebut Petitioner’s showing that joinder is warranted,
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`Petitioner respectfully requests that its motion be granted and the present petition be
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`joined with IPR2018-00544.
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`5
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`Date: August 6, 2018
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`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
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`Attorney for Petitioner Daimler AG.
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`6
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned “REPLY IN
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`FURTHER SUPPORT OF MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
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`AND 37 C.F.R. §§ 42.22 AND 42.122(b) TO INTER PARTES REVIEW OF
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`IPR2018-00544” was served in its entirety on August 6, 2018, upon the following
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`parties:
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`Counsel for Patent Owner in IPR2018-00544 and IPR2018-01209, via
`electronic mail:
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`LEAD COUNSEL
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`BACKUP COUNSEL
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`Peter Lambrianakos (Reg. No. 58,279)
`plambrianakos@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Tel. 212-209-4800
`Fax. 212-209-4801
`
`
`Alfred R. Fabricant
`afabricant@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Tel. 212-209-4800
`Fax. 212-209-4801
`Vincent J. Rubino, III (Reg. No. 68,594)
`vrubino@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Tel. 212-209-4800
`Fax. 212-209-4801
`
`Timothy J. Rousseau (Reg. No. 59,454)
`trousseau@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Tel. 212-209-4800
`Fax. 212-209-4801
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`1
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`Enrique W. Iturralde (Reg. No. 72,883)
`eiturralde@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Tel. 212-209-4800
`Fax. 212-209-4801
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`Counsel for Petitioners in IPR2018-00544, via electronic mail:
`
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`BACKUP COUNSEL
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`Jonathan M. Strang (Reg. No. 61,724)
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`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`Tel. 202-637-2200
`Fax. 202-637-2201
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`Matthew J. Moore (Reg. No. 42,012)
`matthew.moore@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`Tel. 202-637-2200
`Fax. 202-637-2201
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`LEAD COUNSEL
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`Clement Naples (Reg. No. 50,663)
`clement.naples@lw.com
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`Tel. 212-906-1200
`Fax. 212-751-4864
`Lisa K. Nguyen (Reg. No. 58,018)
`lisa.nguyen@lw.com
`Latham & Watkins LLP
`140 Scott Drive
`Menlo Park, CA 94025
`Tel. 650-328-4600
`Fax. 650-463-2600
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`2
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`Date: August 6, 2018
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`IPR2018-01209
`U.S. Patent No. 8,155,342
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`Respectfully submitted,
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`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
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`Attorney for Petitioner Daimler AG.
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`3
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