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