`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAHLE FILTER SYSTEMS NORTH AMERICA, INC.
`
`Petitioner
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC
`
`Patent Owner
`____________
`
`Case No. 2019-00960
`
`Patent RE38,844
`______
`
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C. 315(c)
`AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313–1450
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2019-00960
`Patent RE38,844
`
`Pursuant to 37 C.F.R. 42.122(b), Petitioner respectfully requests joinder of
`
`this inter partes review (Case No. IPR2019-00960, “MAHLE IPR”) to an earlier
`
`inter partes review filed by BASF Corporation (Case No. IPR2019-00202, “BASF
`
`IPR”). The MAHLE IPR is intentionally identical to the BASF IPR in all substantive
`
`aspects. Both seek inter partes review of claims 1–8, 11, 12, 14–16, 18–21, 24, 25,
`
`27–29, 31–33, 36, 37, 39–41, 43–45, 48, 49, and 51–53 (collectively the “Challenged
`
`Claims”) of U.S. Patent No. RE38,844 (“the ’844 patent”). Further, the MAHLE IPR
`
`and the BASF IPR rely upon the same analytical framework (e.g., same expert
`
`declarant, prior art, claim charts, and claim constructions) in addressing the
`
`Challenged Claims. Accordingly, resolving both inter partes reviews will
`
`necessarily involve considering the same issues by all parties and the Patent Trial
`
`and Appeal Board (“Board”).
`
`Petitioner is filing this joinder motion and the accompanying petition to ensure
`
`that the instituted trial is completed in the event that BASF IPR reaches a settlement
`
`with the Patent Owner. Joinder of these proceedings also presents the best
`
`opportunity to secure the just, speedy, and inexpensive resolution of the related
`
`proceedings without any prejudice to the Patent Owner. This includes consolidated
`
`filings and discovery and eliminating the duplicate hearings and briefing that would
`
`surely accompany separate proceedings. After inquiry by Petitioner, BASF indicated
`
`1
`
`
`
`
`that it would not oppose the motion for joinder. Joinder should also provide for case
`
`IPR2019-00960
`Patent RE38,844
`
`management efficiencies for the Board.
`
`In light of the similarities of the proceedings and the efficiencies that can be
`
`realized via joinder, Petitioner respectfully requests that joinder be granted.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`
`
`The ’844 patent is assigned to Ingevity South Carolina, LLC (“Ingevity” or
`
`“Patent Owner”). Ingevity has asserted the ’844 patent against MAHLE Filter
`
`Systems North America, Inc. (“MAHLE”) and BASF Corporation (“BASF”) in
`
`Ingevity Corp. et al. v. MAHLE Filter Sys. North America, Inc.et al., Investigation
`
`No. 337-TA-1140 (ITC), filed November 8, 2018; Ingevity Corp. et al. v. BASF
`
`Corp., Case No. 1:18-cv-01391 (D. Del.), filed September 6, 2018; Ingevity Corp.
`
`et al. v. MAHLE Filter Sys. North America, Inc., Case No. 1:18-cv-06158 (N.D. Ill.),
`
`filed September 7, 2018; Ingevity Corp. v. BASF Corp., Case No. 1:18-cv-01072 (D.
`
`Del.), filed July 19, 2018 and dismissed without prejudice October 11, 2018; and
`
`Ingevity Corp. v. MAHLE Filter Sys. North America, Inc., Case No. 1:18-cv-04920
`
`(N.D. Ill.), filed July 19, 2018 and dismissed without prejudice September 10, 2018.
`
`BASF filed a petition requesting inter partes review of the ’844 patent on November
`
`5, 2018. (BASF IPR, Paper 1). The Board has not yet entered a decision on whether
`
`to institute the BASF IPR. Out of an abundance of caution, the ’844 patent may
`
`relate to the subject matter of the following administrative actions: BASF
`
`2
`
`
`
`
`Corporation filed an opposition to European Pat. No. 3055546 on January 30, 2019;
`
`IPR2019-00960
`Patent RE38,844
`
`and BASF Corporation filed an opposition to European Pat. No. 2906811 on
`
`November 6, 2018.
`
`
`
`III. LEGAL STANDARD
`
`
`
`When more than one petition for inter partes review of the same patent is
`
`properly filed and those petitions warrant institution, the Board has the authority and
`
`discretion to join the proceedings. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
`
`Joinder of one inter partes review with another inter partes review is appropriate
`
`where it secures the just, speedy, and inexpensive resolution of the inter partes
`
`review proceedings. See 37 C.F.R. § 42.1(b).
`
`
`
`A petitioner may request joinder, without prior authorization, up to one month
`
`after the institution date of the proceeding to which joinder is requested. 37 C.F.R.
`
`§ 42.122(b). A joinder request should (1) set forth the reasons why joinder is
`
`appropriate, (2) identify any new grounds of unpatentability asserted in the petition,
`
`and (3) explain what impact (if any) joinder would have on the trial schedule for the
`
`existing review. See, e.g. Microsoft Corp. v. IPR Licensing, Inc., IPR2015-00074,
`
`Paper 21 at 4 (Mar. 4, 2015). A joinder request can additionally address specifically
`
`how briefing and discovery may be simplified. See, e.g., Sony Corp. of Am. v.
`
`Network-1 Security Solutions, Inc., IPR2013-00495, Paper 13 at 3 (Sep. 16, 2013);
`
`Fujitsu Semiconductor Ltd. v. Zond, LLC, IPR2014-00845, Paper 14 at 3 (Oct. 2,
`
`3
`
`
`
`
`2014). Petitioner addresses each of these points below.
`
`IV. ANALYSIS
`
`IPR2019-00960
`Patent RE38,844
`
`
`
`Petitioner respectfully requests that the Board grant this motion for joinder
`
`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) and enter an order
`
`consistent with the proposed order provided below.
`
`A. This Joinder Motion is Timely
`
`
`
`This motion is timely. Under 37 C.F.R. § 42.122(b), joinder can be requested
`
`without prior authorization no later than one month after the institution date of the
`
`proceeding to which joinder is requested. Because this motion is being filed prior to
`
`the Board’s decision to institute trial in the BASF IPR, it meets the requirements of
`
`§ 42.122(b). See, e.g., Biotronik, Inc. v. Atlas IP LLC, IPR2015-00534, Paper 10
`
`(Feb. 25, 2015) (granting motion for joinder filed concurrently with institution of
`
`IPR review).
`
`B.
`
`Joinder is Appropriate
`
`Joinder of the MAHLE IPR and the BASF IPR is the most practical way to
`
`secure the just, speedy, and inexpensive resolution of these related proceedings. See
`
`37 C.F.R. § 42.1(b). The petition in the MAHLE IPR is intentionally identical to
`
`the petition in the BASF IPR in all substantive aspects. That is, the same claims are
`
`challenged (1–8, 11, 12, 14–16, 18–21, 24, 25, 27–29, 31–33, 36, 37, 39–41, 43–
`
`45, 48, 49, and 51–53 of the ’844 patent) based on the same prior art, same claim
`
`4
`
`
`
`
`
`IPR2019-00960
`Patent RE38,844
`
`charts, and same claim constructions. The same expert declarant is used, and the
`
`expert’s declarations in the two cases are substantively identical. Further, unity of
`
`exhibits and exhibit numbering (particularly with respect to prior art) with the
`
`MAHLE IPR have also been maintained. Accordingly, resolving the MAHLE IPR
`
`and BASF IPR will necessarily involve considering the same issues and same
`
`papers. Joining these inter partes reviews thus presents an opportunity to streamline
`
`a review of the Challenged Claims and eliminate unnecessary duplication of filings,
`
`papers, and efforts of the Petitioner, the Patent Owner, and the Board. On the other
`
`hand, if the MAHLE IPR and BASF IPR proceed separately, there would
`
`undoubtedly be needless duplicative effort.
`
`C. Consolidated Filings and Discovery
`
`
`
`To further ensure a streamlined process, and because the grounds of
`
`unpatentability in the MAHLE IPR and the BASF IPR are the same, Petitioner
`
`agrees to work closely with BASF to avoid redundancies wherever possible.
`
`
`
`For example, Petitioner agrees to consolidated filings for all substantive
`
`papers in the proceeding (e.g., Reply to the Patent Owner’s Response, Opposition to
`
`Motion to Amend, Motion for Observation on Cross Examination Testimony of a
`
`Reply Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude
`
`Evidence, and Reply). Specifically, so as to avoid lengthy and duplicative briefing,
`
`and so long as BASF remains in the proceeding, Petitioner will agree to:
`
`5
`
`
`
` incorporate its filings with those of BASF in a consolidated filing, subject to
`
`IPR2019-00960
`Patent RE38,844
`
`
`
`the ordinary rules for one party on page limits;
`
` be jointly responsible with BASF for the consolidated filings; and
`
` not be permitted to make arguments separately from those advanced by
`
`Petitioner and BASF in the consolidated filings, unless specifically authorized by
`
`the Board.
`
`
`
`Petitioner will also agree to consolidated discovery. This is appropriate given
`
`that Petitioner and BASF are using the same expert declarant who has submitted a
`
`substantively identical declaration in the two proceedings. Additionally, Petitioner
`
`will agree (1) to designate a single attorney to conduct, on behalf of Petitioner and
`
`BASF, the cross-examination of any witness produced by Patent Owner and the
`
`redirect of any witness produced by Petitioner and Patent Owner, and/or (2) to limit
`
`such cross-examinations and redirect to the time normally allotted for one party.
`
`Petitioner and BASF will not receive any additional cross-examination or redirect
`
`time.
`
`D. No New Grounds for Unpatentability
`
`
`
`The MAHLE IPR raises no new grounds of unpatentability from those raised
`
`in the BASF IPR. This is because, as noted above, the petitions in the MAHLE IPR
`
`and BASF IPR are substantively identical.
`
`E.
`
`Joinder Will Streamline the Proceedings and Result in No
`
`6
`
`
`
`
`Prejudice to Patent Owner
`
`IPR2019-00960
`Patent RE38,844
`
`
`
`Joinder will streamline the proceedings and reduce the costs and burden on
`
`Petitioner, Patent Owner, and the Board. Joining these proceedings will eliminate
`
`duplicate papers that must be filed, reviewed, and managed in each proceeding if the
`
`proceedings are not joined. Joinder will therefore also create case management
`
`efficiencies for the Board and all parties. Further, joinder will also reduce by half the
`
`time and expense for depositions and other discovery that would otherwise
`
`accompany separate IPR proceedings. As such, joinder will simplify briefing and
`
`discovery, without any foreseeable prejudice to Patent Owner.
`
`V.
`
`PROPOSED ORDER
`
`
`
`In light of the benefits of joinder described above, Petitioner proposes an order
`
`joining the MAHLE IPR with the BASF IPR consistent with the following, which
`
`BASF does not oppose:
`
` If inter partes review is instituted in the MAHLE IPR, the MAHLE IPR will
`
`be joined to the BASF IPR;
`
` The scheduling order entered for the BASF IPR will apply to the joined
`
`proceedings;
`
` Throughout the joined proceedings, Petitioner and BASF will file papers as
`
`consolidated filings, except for motions that do not involve the other party, in
`
`accordance with the Board’s established rules regarding page limits. So long as they
`
`7
`
`
`
`
`both continue to participate in the merged proceedings, Petitioner and BASF will
`
`IPR2019-00960
`Patent RE38,844
`
`identify each such filing as a consolidated filing and will be responsible for
`
`completing all consolidated filings;
`
` Petitioner and BASF (1) will designate an attorney to conduct the cross-
`
`examination of any witness produced by Patent Owner and the redirect of any given
`
`witness produced by Petitioner and BASF and/or (2) will limit such cross-
`
`examinations and redirect to within the timeframe normally allotted by the rules for
`
`one party. Petitioner and BASF will not receive any additional cross-examination or
`
`redirect time; and
`
` Patent Owner will conduct any cross-examination of any given witness jointly
`
`produced by Petitioner and BASF and the redirect of any given witness produced by
`
`Patent Owner within the timeframe normally allotted by the rules for one cross-
`
`examination or redirect examination.
`
`VI. CONCLUSION
`
`
`
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`institute its Petition for inter partes review of U.S. Patent RE38,844 and grant
`
`joinder of the MAHLE IPR and the BASF IPR.
`
`8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00960
`Patent RE38,844
`
`Respectfully submitted,
`
`MAHLE Filter Systems North America, Inc.
`
`By /Randall J. Peck/
`Randall J. Peck, Reg. No. 66,147
`WARNER NORCROSS & JUDD LLP
`2000 Town Center
`Suite 2700
`Southfield, MI 48075-1318
`616-784-5000
`
`By /Jeanne M. Gills/
`Jeanne M. Gills, Reg. No. 44,458
`FOLEY & LARDNER LLP
`321 North Clark Street
`Suite 2800
`Chicago, IL 60654-5313
`312-832-4500
`
`
`Dated: April 9, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`
`
`IPR2019-00960
`Patent RE38,844
`
`Certificate of Service
`37 C.F.R. § 42.6(e)(4)
`I certify that on April 9, 2019, I am causing a copy of this Petitioner’s Motion
`
`
`
`
`
`
`for Joinder under 35 U.S.C. 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) to be
`
`served via Priority Mail Express upon the following:
`
`CANTOR COLBURN LLP
`20 Church Street, 22nd Floor
`Hartford, CT 06103
`
`Courtesy copies were also served on the following counsel:
`
`WESTROCK COMPANY
`ATTN: IP LAW GROUP
`501 South 5th Street, 3rd Floor
`Richmond, VA 23219-0501
`
`Jeffrey T. Thomas, Esquire
`Spencer W. Ririe, Esquire
`Rustin K. Mangum
`Taylor W. King
`GIBSON DUNN & CRUTCHER LLP
`3161 Michelson Drive
`Irvine, CA 92612
`jtthomas@gibsondunn.com
`sririe@gibsondunn.com
`rmangum@gibsondunn.com
`twking@gibsondunn.com
`
`Brian M. Buroker, Esquire
`GIBSON DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036
`bburoker@gibsondunn.com
`
`10
`
`
`
`
`
`
`Dated: April 9, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`April 9, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00960
`Patent RE38,844
`
`Respectfully submitted,
`
`MAHLE Filter Systems North America, Inc.
`
`By /Randall J. Peck/
`Randall J. Peck, Reg. No. 66,147
`WARNER NORCROSS & JUDD LLP
`2000 Town Center
`Suite 2700
`Southfield, MI 48075-1318
`616-784-5000
`
`
`
`11
`
`