`Patent No. RE38,844
`
`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. IPR2019-00960
`Patent No. RE38,844
`______________________
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER (PAPER
`NO. 3)
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`
`
`
`
`
`Alexandria, VA 22313-1450
`
`Case No. IPR2017-00584
`Patent No. 9,187,504
`
`
`
`Case No. IPR2019-00960
`Patent No. RE38,844
`
`Patent Owner opposes joinder of IPR2019-00960 with IPR2019-00202 filed
`
`by BASF Corporation.
`
`First, joinder of a second IPR is premature. No institution decision in
`
`IPR2019-00202 has been entered as of this date and thus, a decision on joinder
`
`should be deferred. Patent Owner provided detailed reasons why IPR2019-00202
`
`should not be instituted in its Patent Owner’s Preliminary Response. If IPR2019-
`
`00202 is not instituted, then institution and joinder should be denied in IPR2019-
`
`00960.
`
`Second, the petitioner in IPR2019-009660 (Mahle Filter Systems North
`
`America, Inc.) is listed as a real party in interest in IPR2019-00202. See IPR2019-
`
`00202, Paper No. 2 at 81. Mahle provides no basis for allowing it to be a real party
`
`in interest in two substantively identical IPR petitions on the same patent raising the
`
`same grounds. It provides no explanation why it is just and speedy to permit parties,
`
`such as Mahle, to be a real party in interest to one petition (while affirmatively
`
`electing not to be named as a petitioner) but then months later change its mind and
`
`seek joinder to the original petition. Joining petitions and adding petitioners
`
`increases the complexity of the proceedings. That complexity may be justified in
`
`some circumstances, but not where the complexity is caused by the petitioner’s own
`
`affirmative decision to change its mind. IPR2019-00202 fails to explain why
`
`4
`
`
`
`Case No. IPR2017-00584
`Patent No. 9,187,504
`
`Mahle’s decision to change its mind and actually participate as a petitioner is
`
`justified.
`
`Third, IPR2019-00960 identifies six additional real parties in interest that are
`
`not listed as petitioners in either petition. Joinder should further be denied if it turns
`
`out that any of those entities should have been identified as real parties in interest in
`
`IPR2019-00202.
`
`
`
`
`
`Date: May 9, 2019
`
`Respectfully submitted,
`
`By: /Brian M. Buroker/
`Brian M. Buroker
`Reg. No. 39,125
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Ave., N.W.
`Washington, D.C. 20036
`
`Lead Counsel for Patent Owner
`
`
`
`Case No. IPR2019-00960
`Patent No. RE38,844
`
`CERTIFICATE OF SERVICE
`A copy of PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`(PAPER NO. 3) was served via electronic mail on the following counsel of record
`
`for Petitioner:
`
`Randall J. Peck (Reg. No. 66,147)
`rpeck@wnj.com
`Warner Norcross+ Judd LLP
`2000 Town Center
`Suite 2700
`Southfield, MI 48075-1318
`(248) 784-5000
`
`Jeanne M. Gills (Reg. No. 44,458)
`jmgills@foley.com
`Foley & Lardner LLP
`321 North Clark Street
`Suite 2800
`Chicago, IL 60654-5313
`(312) 832-4500
`
`
`
`Dated: May 9, 2019
`
`
`
`/Brian M. Buroker/
`Brian M. Buroker
`Reg. No. 39,125
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Ave., N.W.
`Washington, D.C. 20036
`
`Lead Counsel for Patent Owner
`
`
`
`6
`
`
`
`
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