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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`GOPRO, INC., GARMIN INTERNATIONAL, INC., AND GARMIN USA, INC.
`
`Petitioners,
`
`v.
`
`CELLSPIN SOFT, INC.
`
`Patent Owner.
`
`_________________________
`
`U.S. Patent No. 9,258,698
`Inter Partes Review No. IPR2019-01107
`
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2019-00127
`
`
`

`

`
`
`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`TABLE OF CONTENTS
`
`Page
`STATEMENT OF THE PRECISE RELIEF REQUESTED .................................... 1
`STATEMENT OF MATERIAL FACTS ................................................................. 2
` STATEMENT OF REASONS FOR RELIEF REQUESTED .................................. 3
`
`Legal Standard ............................................................................................... 3
`
`Petitioners' Motion for Joinder is Timely ....................................................... 3
`
`Each Factor Weighs in Favor of Joinder ....................................................... 3
`1.
`Joinder Is Appropriate ......................................................................... 3
`2.
`The Present Petition Is Substantively Identical to the Canon
`IPR Petition .......................................................................................... 4
`Joinder Will Not Impact the Trial Schedule for the Canon IPR ......... 7
`3.
`Briefing and Discovery Will Be Simplified ........................................ 7
`4.
`INAPPLICABILITY OF GENERAL PLASTIC FACTORS.................................... 9
`CONCLUSION ...................................................................................................... 14
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2018-00580, Paper 13 (PTAB Aug. 21, 2018) ........................................... 9, 10, 14
`Canon U.S.A., Inc. v. Cellspin Soft, Inc.,
`IPR2019-00127 .................................................................................................... 1, 2, 15
`Cellspin Soft, Inc. v. Fitbit, Inc., et al.,
`Case No. 17-cv-06881, Doc. 74 .................................................................................... 2
`Cellspin Soft, Inc. v. Garmin International, Inc. and Garmin USA, Inc.,
`Case No. 3:17-cv-05934 ................................................................................................ 2
`Cellspin Soft, Inc. v. Garmin International, Inc., et al.,
`Case No. 18-1822 (Fed. Cir.) ........................................................................................ 2
`Cellspin Soft, Inc. v. GoPro, Inc.,
`Case No. 18-1824 (Fed. Cir.) ........................................................................................ 2
`Cellspin Soft, Inc. v. GoPro, Inc.,
`Case No. 3:17-cv-05939 ................................................................................................ 2
`Celltrion, Inc. v. Genentech, Inc.,
`IPR2018-01019, Paper 11 (PTAB Oct. 30, 2018) ................................................ 10, 14
`Dell Inc. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00385, Paper 17 (PTAB July 29, 2013) ......................................................... 4
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2017-01357, Paper 19 (PTAB Sept. 6, 2017) ................................................ passim
`Kyocera Corporation v. Softview LLC,
`IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ........................................................ 3
`Mylan Pharm. Inc. v. Novartis AG and LTS Lohmann Therapie-Systeme AG,
`IPR2014-00550, Paper 38 (PTAB Apr. 10, 2015) ........................................................ 8
`Panasonic Corp. of North America, et al. v. Cellspin Soft, Inc.,
`IPR2019-00131 ............................................................................................................ 11
`
`
`
`ii
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp.,
`IPR2018-00898, Paper 9 (PTAB Oct. 1, 2018) .......................................................... 13
`Sony Corp., et al. v. Memory Integrity, LLC,
`IPR2015-01353, Paper 11 (PTAB Oct. 15, 2015) .................................................... 7, 9
`Teva Pharms. USA, Inc. v. Allergan, Inc.,
`IPR2017-00579, Paper 9 (PTAB Mar. 31, 2017) .......................................................... 6
`Valve Corp. v. Electronic Scripting Products, Inc.,
`IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) ........................................................ 14
`Statutes
`35 U.S.C. § 101 .................................................................................................................. 2
`35 U.S.C. § 315(c) .......................................................................................................... 1, 3
`35 U.S.C. § 316(a)(11) ..................................................................................................... 13
`Other Authorities
`37 C.F.R. § 42.22 ................................................................................................................ 1
`37 C.F.R. § 42.101(b) ......................................................................................................... 3
`37 C.F.R. § 42.122(b) ..................................................................................................... 1, 3
`
`
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`iii
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), GoPro, Inc., Garmin
`
`International, Inc., and Garmin USA, Inc. (collectively, “Petitioners”) respectfully request
`
`joinder of the concurrently-filed Petition for Inter Partes Review of U.S. Patent No.
`
`9,258,698 (“the GoPro/Garmin Petition”) with pending Inter Partes Review, Canon
`
`U.S.A., Inc. v. Cellspin Soft, Inc., IPR2019-00127 for the ’698 Patent (“the Canon IPR”).
`
`The Canon IPR was instituted on April 29, 2019, and therefore, this Motion for Joinder is
`
`timely filed under 37 C.F.R. §§ 42.22 and 42.122(b), as it is submitted no later than one
`
`month after the April 29, 2019, institution date of the Canon IPR. As detailed below, the
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`GoPro/Garmin Petition presents substantially the same grounds of unpatentability, prior
`
`art, and evidence, and Petitioners are willing to accept an “understudy” role in the Canon
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`IPR. Joinder will not affect the schedule or otherwise delay the Canon IPR, nor will
`
`joinder complicate any issues.
`
`The Petitioners asked Canon whether it would oppose Petitioners’ joinder request.
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`Canon indicated it may oppose. Additionally, Canon indicated it will not allow Petitioners
`
`to retain Canon’s expert for the present Petition. Therefore, Petitioners’ expert for the
`
`present IPR has reviewed the evidentiary record of the opinions provided by Canon’s
`
`expert, agrees with his opinions, and adopts those opinions for purposes of the present
`
`IPR. However, Petitioners are willing to rely on Canon’s expert should Canon agree that
`
`Petitioners may retain him.
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`Joinder is appropriate because it will not unduly burden or prejudice the parties in
`1
`
`
`
`

`

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`
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`the Canon IPR and will efficiently resolve the question of the ’698 Patent’s patentability
`
`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`in a single proceeding.
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`
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`STATEMENT OF MATERIAL FACTS
`On October 16, 2017, Cellspin Soft, Inc. (“Cellspin” or “Patent Owner”) filed a
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`civil action for patent infringement of the ’698 Patent against multiple entities, including
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`Petitioners (the “District Court Litigation”). See Cellspin Soft, Inc. v. GoPro Inc., Case
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`No. 3:17-cv-05939, N.D. Cal.; and Cellspin Soft, Inc. v. Garmin International, Inc. and
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`Garmin USA, Inc., Case No. 3:17-cv-05934, N.D. Cal.
`
`In the District Court Litigation, the Court found the ’698 Patent invalid under 35
`
`U.S.C. § 101. Cellspin Soft, Inc. v. Fitbit, Inc., et al., Case No. 17-cv-06881, Doc. 74.
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`Cellspin appealed the District Court’s finding to the Federal Circuit, and the appeal is
`
`pending. See Cellspin Soft, Inc. v. GoPro, Inc., Case No. 18-1824 (Fed. Cir.); Cellspin
`
`Soft, Inc. v. Garmin International, Inc., et al., Case No. 18-1822 (Fed. Cir.). The District
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`Court Litigation is currently stayed.
`
`
`
`On October 30, 2018, Canon filed a petition for inter partes review (IPR2019-
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`00127) requesting cancellation of claims 1-22 of the ʼ698 Patent. On April 29, 2019, the
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`Board instituted the Canon IPR on all proposed grounds, finding that Canon demonstrated
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`a reasonable likelihood of success of demonstrating unpatentability of at least one of the
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`Challenged Claims of the ʼ698 Patent. See IPR2019-00127, Decision Instituting IPR
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`Review, Paper No. 7.
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`2
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
` STATEMENT OF REASONS FOR RELIEF REQUESTED
`Legal Standard
`
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed inter
`
`partes review petition to an instituted inter partes review proceeding. See 35 U.S.C.
`
`§ 315(c). A motion for joinder must be filed within one month of the Board instituting an
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`original inter partes review. 37 C.F.R. § 42.122(b). In deciding whether to exercise its
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`discretion and permit joinder, the Board considers factors, including: (1) the reasons why
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`joinder is appropriate; (2) whether the new petition presents any new grounds of
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`unpatentability; (3) what impact, if any, joinder would have on the trial schedule for the
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`existing review; and (4) how briefing and discovery may be simplified. See Kyocera
`
`Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).
`
`
`
`Petitioners’ Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the April
`
`29, 2019 Canon IPR institution decision. See 37 C.F.R. § 42.122(b). Further, the one-year
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`bar set forth in 37 C.F.R. § 42.101(b) does not apply because this Motion for Joinder is
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`filed concurrently with the GoPro/Garmin Petition. 37 C.F.R. § 42.122(b).
`
`
`
`Each Factor Weighs in Favor of Joinder
`
`1.
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`Joinder Is Appropriate
`
`Joinder is appropriate because this Motion for Joinder is being timely filed in
`
`accordance with 35 U.S.C. § 315(c). The present Petition presents the same grounds of
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`unpatentability, the same supporting evidence (save for the expert declaration, discussed
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`3
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`
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`further below), and challenges the same claims as the Canon IPR. Joinder is further
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`appropriate as effecting the Congressional intent to efficiently resolve similar disputes.
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`See Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17 at 10 (PTAB
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`July 29, 2013) (citing 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
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`Kyl) (“The Office anticipates that joinder will be allowed as of right—if an inter partes
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`review is instituted on the basis of a petition, for example, a party that files an identical
`
`petition will be joined to that proceeding, and thus allowed to file its own briefs and make
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`its own arguments.”) (emphasis omitted).
`
`2.
`
`The Present Petition Is Substantively Identical to the Canon IPR
`Petition
`Each of the four joinder factors considered by the Board weighs in favor of joinder.
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`The GoPro/Garmin Petition does not present any new grounds of unpatentability; rather
`
`it is substantively identical to the Canon IPR Petition. Except for the identified expert, the
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`GoPro/Garmin IPR Petition is a “copycat” of the Canon IPR Petition. The only difference
`
`(save for the expert and formalities differences, such as different petitioners,
`
`typographical corrections and real parties-in-interest) between the Canon IPR Petition and
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`the GoPro/Garmin IPR Petition is a reference to the claim construction standards.
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`Regarding the claim construction standards (i.e., BRI vs. Phillips), any proposed
`
`constructions in the Canon IPR are at least included within the scope of either standard.
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`Therefore, the difference in standards should not have any material effect on whether
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`joinder is appropriate.
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`4
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`As noted above, Canon indicates it will not allow the present Petitioners to retain
`
`
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`Canon’s declarant, Dr. Vijay Madisetti. Consequently, Petitioners have retained Mr.
`
`Gerald (Gerry) Christensen as an expert. Mr. Christensen has reviewed the Canon IPR
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`and supporting evidence, including the Declaration of Dr. Vijay Madisetti (IPR2019-
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`00127, Ex. 1003). (Ex. 1033, ¶16). Mr. Christensen opines that he is in agreement with
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`Dr. Madisetti’s opinions and adopts them as his own. (Ex. 1033, ¶15). To ensure
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`consistency between Dr. Madisetti’s and Mr. Christensen’s respective opinions, Mr.
`
`Christensen does not provide any further substantive opinions with regard to the Canon
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`IPR, instituted grounds, and evidentiary support not otherwise provided by Dr. Madisetti.
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`Exhibit 1033 to the present Petition is the Declaration of Mr. Christensen, and the only
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`difference in the present Exhibit 1003, the Declaration of Dr. Madisetti in the Canon IPR,
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`is the listing of Mr. Christensen’s credentials as a POSITA, statement of his review,
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`adoption of Dr. Madisetti’s opinions, and a reiteration of legal assumptions. To the extent
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`it is necessary and requested by Patent Owner, Petitioners will make Mr. Christensen
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`available for a deposition at a time and location that will not impact the Scheduling Order
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`in the Canon IPR.
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`Petitioners are willing to rely on the same expert as Canon (i.e., Dr. Madisetti),
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`should Canon permit it. Should Canon allow the Petitioners to retain the same expert, then
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`Petitioners will withdraw the expert declaration of Mr. Christensen and solely rely on Dr.
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`Madisetti’s declaration and testimony. Should Canon not allow Petitioners to retain
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`5
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`Canon’s expert, and should the Board determine Petitioners’ reliance on Mr. Christensen
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`as an expert would adversely affect completion of the Canon IPR according to the
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`Scheduling Order in the Canon IPR and within the one-year statutory timeframe, then
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`Petitioners further agree to withdraw Mr. Christensen’s declaration and solely rely on the
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`declaration of Canon’s expert, Dr. Madisetti. Such would avoid any need to depose Mr.
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`Christensen. Petitioners make these concessions to ensure no, or negligible, impact on the
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`schedule due to joinder. Teva Pharms. USA, Inc. v. Allergan, Inc., IPR2017-00579, Paper
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`9 at 3-4 (PTAB Mar. 31, 2017) (ordering joinder where first petitioner refused to allow
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`joining petitioner to retain first petitioner’s expert and further where joining petitioner
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`agreed to withdraw its expert’s declaration in the event “the Board determines it would
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`not be able to complete these proceedings within the one-year timeframe as a result of
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`having to provide the Patent Owners with the opportunity to additionally depose [the
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`joining petitioner’s expert]”) (quoting Id., Paper 3 (Motion for Joinder) at 9, FN 3).
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`Other than the use of Mr. Christensen as an expert (and his adoption of Dr.
`
`Madisetti’s opinions), the present Petition is identical to the Canon IPR Petition, except
`
`for non-substantive formalities, such as a comment regarding the change in claim
`
`construction standards. There are no changes to the facts, citations, evidence, or arguments
`
`presented in the present Petition. Thus, the present Petition presents the same grounds of
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`unpatentability as the Canon IPR and does not present any new theories/arguments.
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`Because the Petitions are substantively identical, good cause exists for joining this
`
`
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`6
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`

`

`
`
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`proceeding with the Canon IPR so that the Board can efficiently resolve all grounds in
`
`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`both the GoPro/Garmin and Canon Petitions in a single proceeding.
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`3.
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`Joinder Will Not Impact the Trial Schedule for the Canon IPR
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` Since Petitioners will accept the current schedule, joinder will have minimal, if
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`any, impact on trial, as all issues are substantively identical, and Petitioners will accept an
`
`“understudy” role, discussed further for Factor 4. See Sony Corp., et al. v. Memory
`
`Integrity, LLC, IPR2015-01353, Paper 11 at 5-6 (PTAB Oct. 15, 2015) (granting motion
`
`for joinder where petitioners requested an “understudy” role and petitioners relied “on the
`
`same prior art, same arguments, and same evidence, including the same expert and a
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`substantively identical declaration).
`
`4.
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`Briefing and Discovery Will Be Simplified
`
`Because the GoPro/Garmin Petition is substantively identical to the Canon Petition,
`
`with the same grounds rejecting the same claims as instituted by the Board, there are no
`
`new issues for Patent Owner to address. Due to the same issues being presented as in the
`
`Canon Petition, Patent Owner will not be required to present any additional responses or
`
`arguments. See Sony Corp., IPR2015-01353, Paper 11 at 6 (granting IPR and motion for
`
`joinder where “joinder should not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required in [the original IPR]”).
`
`The present Petitioners also agree to take a passive understudy role as described
`
`below, up and until the Canon IPR is terminated with respect to Canon. The Board has
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`
`
`7
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`

`

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`previously described an understudy role as follows:
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`
`
`(a) all filings by [joinder petitioners] in the joined proceeding be
`
`consolidated with [the filings of the original petitioner], unless a filing solely
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`concerns issues that do not involve [the original petitioner]; (b) [joinder
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`petitioners] shall not be permitted to raise any new grounds not already
`
`instituted by the Board in the [original IPR], or introduce any argument or
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`discovery not already introduced by [the original petitioner]; (c) [joinder
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`petitioners] shall be bound by any agreement between [patent owner] and
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`[the original petitioner] concerning discovery and/or depositions; and (d)
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`[joinder petitioners] at deposition shall not receive any direct, cross-
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`examination, or redirect time beyond that permitted for [the original
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`petitioner] alone under either 37 C.F.R. § 42.53 or any agreement between
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`[patent owner] and [the original petitioner].”
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`Mylan Pharm. Inc. v. Novartis AG and LTS Lohmann Therapie-Systeme AG, IPR2014-
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`00550, Paper 38 at 5 (PTAB Apr. 10, 2015) (emphasis in original). Further, with respect
`
`to any depositions of declarants, Petitioners agree that Petitioners’ counsel will not ask
`
`questions of the deponent. With respect to the Oral Hearing, Petitioners agree that
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`Petitioners’ counsel will not present any argument or evidence at the Oral Hearing.
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`Petitioners will assume the primary role only if Canon ceases to participate in the Canon
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`IPR. Should there be an issue unique to GoPro or Garmin that arises during the IPR,
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`
`
`8
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`

`

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`
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`Petitioners request the opportunity to seek leave to address such issue if necessary.
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`By Petitioners accepting a passive understudy role, Patent Owner and Petitioners
`
`can comply with the current trial schedule and avoid any duplicative efforts by the Board
`
`or the Patent Owner. Joinder of Petitioners’ IPR will promote efficiency by avoiding
`
`duplicate reviews, consolidating issues, and avoiding redundancy. Further, these steps
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`will minimize any potential complications or delay that potentially may result by joinder.
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`See Sony Corp., IPR2015-01353, Paper 11 at 6-7 (granting IPR and motion for joinder
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`because “joinder would increase efficiency by eliminating duplicative filings and
`
`discovery, and would reduce costs and burdens on the parties as well as the Board” where
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`petitioners agreed to an “understudy” role).
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`Accordingly, because joinder satisfies each of the Board’s enumerated factors,
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`joinder is warranted.
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`
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`INAPPLICABILITY OF GENERAL PLASTIC FACTORS
`Petitioners respectfully submit the Board’s application of the General Plastic
`
`factors is not warranted for the present Petition. However, to the extent the Board deems
`
`otherwise, the General Plastic factors are “neutralized” due to the timely joinder request,
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`the Petitioners’ acceptance of a passive understudy role, and Petitioners’ willingness to
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`adhere to the existing schedule in the Canon IPR. Apple Inc. v. Uniloc 2017 LLC,
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`IPR2018-00580, Paper 13 at 10 (PTAB Aug. 21, 2018) (discussing General Plastic Indus.
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`Co., Ltd. v. Canon Kabushiki Kaisha, IPR2017-01357, Paper 19 (PTAB Sept. 6, 2017)
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`(precedential as to § II.B.4.i)).
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`9
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`In General Plastic, the Board set forth a series of factors that may be analyzed for
`
`
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`follow-on petitions to help conserve the finite resources of the Board. As explained above,
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`GoPro and Garmin merely seek to join Canon’s Petition in an understudy role as defined
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`by the Board and do not present any new evidence or arguments.
`
`For example, in Apple v. Uniloc, IPR2018-00580, Paper 13 (PTAB Aug. 21, 2018)
`
`(the “Apple ’580 IPR”), the Board granted a Motion for Joinder filed by Apple under
`
`similar facts to the present motion. The Board found the General Plastic factors are
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`“effectively neutraliz[ed]” in view of the timely filed Motion for Joinder and Apple’s
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`agreement to assume a passive understudy role. Id. at 10. The Board analyzed the various
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`General Plastic factors and noted joinder “will not put a significant additional burden on
`
`the Board or jeopardize the Board’s ability to issue a final written decision in [the original
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`IPR]….” Id.; see also Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 9-
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`10 (PTAB Oct. 30, 2018) (granting joinder where petitioner filed a “copycat” petition and
`
`a timely motion for joinder and stating the General Plastic factors are not “particularly
`
`persuasive for establishing abuse of the review process” under such circumstances).
`
`Even though the Board has stated the General Plastic factors are “effectively
`
`neutraliz[ed]” and that a timely filed joinder motion accepting a passive understudy role
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`“effectively obviates any concerns of serial harassment and unnecessary expenditures of
`
`resources,” in an abundance of caution, Petitioners undertake an analysis of the General
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`Plastic factors as follows. Celltrion, IPR2018-01019, Paper 11 at 10; Apple, IPR2018-
`
`
`
`10
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`
`
`00580, Paper 13 at 10.
`
`The first General Plastic factor is whether the same petitioner previously filed a
`
`petition directed to the same claims of the same patent. As noted above, neither Petitioner
`
`has filed a petition against the ’698 Patent. General Plastic, IPR2017-01357, Paper 19 at
`
`at 9. Petitioners note that they have sought joinder to another instituted IPR for the ’698
`
`Patent, namely Panasonic Corp. of North America, et al. v. Cellspin Soft, Inc., IPR2019-
`
`00131 (the “Panasonic IPR”). The Canon IPR challenges all claims of the ’698 Patent,
`
`whereas the Panasonic IPR challenges a subset of all claims. Thus, because the Canon
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`IPR presents a different challenged claim set than the Panasonic IPR, and further because
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`the motions for joinder for the Canon and Panasonic IPRs are being filed at about the
`
`same time, Petitioners are not undertaking a serial challenge to the ’698 Patent or
`
`otherwise filing serial petitions with the intent to harass the Patent Owner. Therefore,
`
`factor one favors granting joinder/institution.
`
`The second General Plastic factor is whether at the time of filing the first petition
`
`the petitioner knew or should have known of the prior art asserted in the second petition.
`
`This factor is neutral, if not inapplicable. Here, the Canon IPR Petition and the
`
`GoPro/Garmin IPR Petition necessarily share the same prior art because the
`
`GoPro/Garmin IPR Petition is a “copycat” of the Canon IPR Petition. Neither GoPro nor
`
`Garmin was aware of the prior art cited for a ground of unpatentability in the Canon IPR
`
`prior to filing of the Canon IPR. Because GoPro and Garmin are merely seeking to join
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`11
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`in an understudy role, this factor is neutral, at best, in determining whether to institute.
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`The third General Plastic factor is whether at the time of filing of the second
`
`petition the petitioner already received the patent owner’s preliminary response to the first
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`petition or received the Board’s decision on whether to institute review in the first petition.
`
`Id. This factor also weighs in favor of institution. Joinder is appropriate because (1) the
`
`Board has instituted the Canon IPR; (2) the present Petitioners are seeking to join the IPR
`
`in a passive understudy role; (3) the present Petitioners are applying the same grounds of
`
`unpatentability; (4) the present Petitioners have not changed their arguments or
`
`unpatentability grounds responsive to the POPR or Board’s Institution Decision, and (5)
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`Petitioners are also not seeking to harass Patent Owner or otherwise engage in serial,
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`tactical filings, given joinder with a copycat petition and passive understudy role. Thus,
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`this factor weighs in favor of joinder/institution.
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`The fourth General Plastic factor is the length of time that has elapsed between the
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`time the petitioner learned of the prior art asserted in the second petition and filing of the
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`second petition. The fifth General Plastic factor is whether the petitioner provides
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`adequate explanation for the time elapsed between the filings of multiple petitions directed
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`to the same claims of the same patent. Id. In the context of a joinder motion where
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`GoPro/Garmin will be taking an understudy role, these factors are inapplicable. Yet
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`further, any delay between filing of the present Petition and the Canon IPR was in
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`response to the District Court’s finding that the ’698 Patent was invalid under Section
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`101. Both GoPro and Garmin relied on the District Court’s findings in forgoing filing an
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`IPR. However, due to the inherently uncertain nature of the pending Federal Circuit appeal
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`and the deadline by which joinder must be requested, Petitioners now seek to join the
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`Canon IPR. Petitioners’ reliance on the District Court’s invalidity ruling under Section
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`101 was reasonable, and accordingly, the fourth and fifth factors weigh in favor of
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`joinder/institution.
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`The sixth General Plastic factor considers the finite resources of the Board. Id. This
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`factor also weighs in favor of joinder/institution. Petitioners appreciate the Board is
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`consistently busy. However, Canon’s petition has already been instituted and allowing
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`joinder of the present IPR will not impact the Board’s resources, especially given the
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`passive understudy role and the copycat petition.
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`The seventh General Plastic factor is the requirement under 35 U.S.C. § 316(a)(11)
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`to issue a final determination no later than one year after the date on which the Director
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`notices institution of review. Id. This factor weighs in favor of institution, as there is
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`nothing to prevent the Board from issuing a final determination on the Canon IPR within
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`one year, even with a joinder of Petitioners and their petition.
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`An eighth factor identified by the Board in Shenzhen is “the extent to which the
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`petitioner and any prior petitioner(s) were similarly situated defendants or otherwise
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`realized a similar-in-time hazard regarding the challenged patent.” Shenzhen Silver Star
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`Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898, Paper 9 at 7 (PTAB Oct. 1,
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`2018) (citation omitted). This factor also weighs in favor of joinder/institution. Petitioner
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`Canon and GoPro/Garmin are entirely different entities, with the only commonality being
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`that all three were sued by Patent Owner Cellspin. At best, the petitioners are only
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`similarly situated because of the pending litigation. However, because the Congressional
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`purpose of the joinder statute is to avoid multiple IPRs and efficiently resolve disputes,
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`the mere fact that the parties were all sued by Patent Owner should not weigh against
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`joinder. See Apple, IPR2018-00580, Paper 10 at 11. This is particularly true since the
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`statute permits joinder under these circumstances. Finding otherwise invites a race to the
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`Patent Office by co-defendants in litigation seeking to be the first-filed petition. Yet
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`further, once joined, the present IPR will be on the same schedule as the Canon IPR and
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`thus, GoPro/Garmin will receive no strategic benefit in filing the present Petition after
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`Canon, even though the parties were sued at the same time. See Celltrion, IPR2018-01019,
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`Paper 11 at 11.
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`Thus, none of the General Plastic factors weighs against institution and joinder in
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`this situation.
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`Finally, Petitioners note the Board’s recently-designated precedential opinion in
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`Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr.
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`2, 2019), is inapplicable because the petitioner, Valve, did not request joinder.
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` CONCLUSION
`Based on the factors discussed above, Petitioners GoPro, Inc., Garmin International,
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`Inc., and Garmin USA, Inc. respectfully request the Board institute the Petition for Inter
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`Partes Review of U.S. Patent No. 9,258,698 and then grant joinder with the Canon U.S.A.,
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
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`Inc. v. Cellspin Soft, Inc., IPR2019-00127 proceeding.
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`Dated: May 28, 2019
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`Respectfully submitted,
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`
` / David T. Xue /
`David T. Xue, Reg. No. 54,554
`
`Lead Counsel for Petitioner,
`GOPRO, INC.
`
`
` /Jennifer C. Bailey/
`Jennifer C. Bailey, Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`ERISE IP, P.A.
`7015 College Boulevard, Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`
`Attorneys for Petitioners,
`GARMIN INTERNATIONAL, INC. AND
`GARMIN USA, INC.
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`Motion for Joinder
`Case IPR2019-01107 of U.S. Patent No. 9,258,698
`CERTIFICATE OF SERVICE
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` hereby certify that on May 28, 2019, a copy of the MOTION FOR JOINDER
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` I
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`
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`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) TO RELATED
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`INTER PARTES REVIEW IPR2019-00127, was served by filing this document
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`through the PTAB’s E2E Filing System as well as delivering a copy via electronic mail
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`upon the following:
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`Counsel for Patent Owner, Cellspin Soft, Inc.
`John J. Edmonds, Reg. No. 56,184
`Edmonds & Schlather, PLLC
`355 South Grand Avenue, Suite 2450
`Los Angeles, CA 90071
`pto-edmonds@ip-lit.com
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`
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`Dated: May 28, 2019
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`/ David T. Xue /
`David T. Xue
` Reg. No. 54,554
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