Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: July 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR COMPANY,
`Petitioner,
`v.
`NEO WIRELESS, LLC,
`Patent Owner.
`
`IPR2023-00764
`Patent 10,965,512 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, CHARLES J. BOUDREAU, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 15
`Date: July 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR COMPANY,
`Petitioner,
`v.
`NEO WIRELESS, LLC,
`Patent Owner.
`
`IPR2023-00764
`Patent 10,965,512 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, CHARLES J. BOUDREAU, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Ford Motor Company (“Petitioner” or “Ford”) filed a Petition
`(Paper 1, “Pet.”) requesting institution of an inter partes review of
`claims 1–30 of U.S. Patent No. 10,965,512 B2 (Ex. 1001, “the ’512 patent”).
`Concurrently, Petitioner filed a Motion for Joinder seeking to be joined as a
`party to Volkswagen Group of America, Inc. v. Neo Wireless, LLC,
`IPR2022-01539 (“Volkswagen IPR”). Paper 3 (“Motion” or “Mot.”). Neo
`Wireless LLC (“Patent Owner”) filed a Preliminary Response (Paper 14,
`“Prelim. Resp.”) and a Response to Petitioner’s Motion for Joinder (Paper 7,
`“Opp.”). Petitioner subsequently filed a Reply in Support of its Motion for
`Joinder. Paper 10 (“Mot. Reply”).
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” For the
`reasons that follow, we determine that institution of inter partes review is
`warranted on the same grounds instituted in the Volkswagen IPR and grant
`Petitioner’s Motion for Joinder.
`B. Real Parties in Interest
`The parties only identify themselves as real parties in interest. Pet. 3;
`Paper 5, 1.
`C. Related Matters
`Petitioner lists several civil actions in which Neo Wireless, LLC is the
`plaintiff and the ’512 patent is involved. Pet. 3–5; Mot. 3–4. Patent Owner
`lists ten current proceedings involving the challenged patent and nine
`proceedings that, according to Patent Owner, have been terminated. Paper 5,
`1–3. The current proceedings include:
`
`2
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`In Re: Neo Wireless, LLC Patent Litigation, No. 2:22-md-03034 (E.D.
`Mich.);
`Neo Wireless LLC v. American Honda Motor Co., Inc., No. 2:22-cv-
`11403 (E.D. Mich.);
`Neo Wireless, LLC v. Ford Motor Co., No. 2:22-cv-11402 (E.D.
`Mich.);
`Neo Wireless, LLC v. Tesla Inc., No. 2:22-cv-11408 (E.D. Mich.);
`Neo Wireless, LLC v. General Motors Co., No. 2:22-cv-11407 (E.D.
`Mich.);
`Neo Wireless LLC v. Toyota Motor North America, Inc., No. 2:22-cv-
`11406 (E.D. Mich.);
`Neo Wireless, LLC v. Volkswagen Group of America, Inc., No. 2:22-
`cv-11404 (E.D. Mich.);
`Neo Wireless, LLC v. Nissan North America Inc., No. 2:22-cv-11405
`(E.D. Mich.);
`Neo Wireless, LLC v. Mercedes-Benz USA, LLC, No. 2:22-cv-11769
`(E.D. Mich.); and
`Neo Wireless, LLC v. FCA US LLC, No. 2:22-cv-11770 (E.D. Mich.).
`Id. at 1–2.
`Both parties also identify IPR2022-01539 and IPR2023-00079.
`Pet. 5; Paper 5, 1. We instituted review in IPR2023-00079 (“Mercedes
`IPR”) and granted a motion for joinder filed by petitioner Mercedes-Benz
`USA LLC (“Mercedes”). Mercedes-Benz USA LLC v. Neo Wireless, LLC,
`IPR2023-00079, Paper 11 (PTAB May 5, 2023) (Decision Granting
`Institution and Granting Motion for Joinder).
`
`3
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`D. The ’512 Patent (Ex. 1001)
`The ’512 patent issued on March 30, 2021, from an application filed
`on September 4, 2020, which is a continuation of several previously filed
`applications, the earliest of which was filed on January 20, 2005. Ex. 1001,
`codes (22), (45), (63), 1:10–29. The ’512 patent also claims priority to a
`provisional application filed on January 29, 2004. Id. at code (60), 1:29–31.
`The ’512 patent provides “methods to define the transmission formats
`of the cell-specific and common pilot subcarriers that enable a receiver to
`perform different system functions.” Ex. 1001, 3:37–40. According to the
`’512 patent, “signal reception can be improved by manipulating phase values
`of the pilot subcarriers and by using power control.” Id. at 3:43–45.
`The ’512 patent describes that, for “multi-carrier wireless
`communications,” such as “orthogonal frequency division multiple access
`(OFDMA),” “network information provided by a portion of total subcarriers
`such as pilot subcarriers” facilitates “important system functions such as
`frequency synchronization and channel estimation.” Ex. 1001, 1:36–38,
`3:55–57. The “pilot subcarriers are divided into two different groups
`according to their functionalities.” Id. at 3:10–12. “The first group is called
`‘cell-specific pilot subcarriers,’ and will be used by the receiver 104 to
`extract information unique to each individual cell.” Id. at 3:17–19. “The
`second group is termed ‘common pilot sub-carriers,’ and are designed to
`possess a set of characteristics common to all base stations of the system.”
`Id. at 3:25–27.
`E. Illustrative Claim
`The ’512 patent includes claims 1–30, all of which Petitioner
`challenges. Of the challenged claims, claims 1, 8, 15, and 23 are
`independent. Reproduced below is claim 1.
`
`4
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`1.
`An orthogonal frequency division multiple access
`(OFDMA)-compatible base station that uses subcarriers in a
`frequency domain and time slots in a time domain, the OFDMA-
`compatible base station comprising:
`a plurality of antennas; and
`a transmitter operably coupled to the plurality of antennas;
`the transmitter configured to:
`insert first pilots of a first type onto a first plurality of
`subcarriers, wherein the first pilots are cell-specific pilots; and
`insert data and second pilots of a second type onto a
`second plurality of subcarriers;
`wherein at least some subcarriers of the first plurality of
`subcarriers or the second plurality of subcarriers are beam-
`formed; and
`the plurality of antennas configured to transmit the first
`plurality of subcarriers and the second plurality of subcarriers in
`at least one of the time slots;
`wherein the second type is different than the first type and
`wherein the first pilots do not interfere with the second pilots.
`Ex. 1001, 9:46–67.
`F. Asserted Prior Art and Proffered Testimonial Evidence
`Petitioner identifies the following references as prior art in the
`asserted grounds of unpatentability:
`Exhibit
`Name
`Reference
`1005
`Tong
`US 7,120,395 B2, issued Oct. 10, 2006
`1007
`Li
`US 2002/0163879 A1, published Nov. 7, 2002
`1017
`Smee
`US 2004/0131007 A1, published July 8, 2004
`1006
`Ketchum US 2004/0179627 A1, published Sept. 16, 2004
`1004
`Kim
`WO 2004/049618 A1, published June 10, 2004
`Pet. 7. Petitioner states that “all references relied upon herein are prior art as
`of January 29, 2004,” “[t]he ‘512 patent’s earliest possible priority date.” Id.
`According to Petitioner, Kim, Tong, Ketchum, and Smee are prior art under,
`
`5
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`at least, pre-AIA 35 U.S.C. § 102(e); and Li is prior art under, at least, pre-
`AIA 35 U.S.C. § 102(b). 1 Id.
`Petitioner also provides a Declaration of Dr. Todor Cooklev.
`Ex. 1035. Petitioner states that it cites to the Declaration which “adopt[s]
`the opinions set forth in EX1003, the declaration of Dr. Paul Min submitted
`in IPR2022-01539,” and Petitioner “notes there are corresponding, identical
`opinions in Dr. Min’s declaration at the same paragraph numbers.” Pet. 2–3.
`According to Petitioner, Volkswagen Group of America, Inc.
`(“Volkswagen”) “refused to share experts for the purposes of this IPR.” Id.
`at 2. Patent Owner provides a Declaration of William P. Alberth Jr. from the
`Volkswagen IPR. Ex. 2001.
`G. Asserted Grounds
`Petitioner asserts that claims 1–30 are unpatentable on the following
`grounds:
`
`Claims Challenged
`
`1–30
`1, 3, 4, 6–8, 10, 11, 13–15, 17, 18, 20, 22,
`23, 25, 26, 28, 30
`5, 12, 21, 29
`Pet. 8.
`
`35
`U.S.C. § References/Basis
`103(a)
`Kim, Tong
`103(a)
`Ketchum, Li
`103(a)
`Ketchum, Li, Smee
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on
`March 16, 2013. Because the ’512 patent claims priority to an application
`filed before that date, our citations to 35 U.S.C. §§ 102 and 103 in this
`Decision are to their pre-AIA versions. See also Pet. 7 (stating but not
`conceding that “[t]he ’512 patent’s earliest possible priority date is
`January 29, 2004”).
`
`6
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`
`II. ANALYSIS
`Joinder for purposes of an inter partes review is governed by
`35 U.S.C. § 315(c), which states:
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`“To join a party to an instituted [inter partes review (IPR)], the plain
`language of § 315(c) requires two different decisions.” Facebook, Inc. v.
`Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First,
`the statute requires that the Director (or the Board acting through a
`delegation of authority) . . . determine whether the joinder applicant’s
`petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect
`joinder, § 315(c) requires the Director to exercise his discretion to decide
`whether to ‘join as a party’ the joinder applicant.” Id.
`A. Whether the Petition Warrants Institution
`Petitioner states that its “Petition is substantively identical to the
`Volkswagen Petition—in fact, it is a verbatim copy of Volkswagen’s
`Petition, with the exception of administrative portions (e.g., mandatory
`notices) and the discussion of Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 (Mar. 11, 2020).” Mot. 2. Petitioner also states that its “expert
`declaration is a verbatim copy of Volkswagen’s with the exception of the
`expert’s qualifications.” Id. at 7 n.2. Petitioner further states that it “will
`rely on its own expert’s declaration only if Volkswagen and Mercedes are
`not parties to this IPR.” Id. at 8 n.2.
`
`7
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`Patent Owner notes that the “Petition is a copycat petition seeking
`joinder to a case in which institution has already been granted” and that “for
`the panel’s convenience that the non-institution arguments in this
`Preliminary Response essentially repeat the non-institution arguments that
`were raised in the already-instituted target case.” Prelim. Resp. 1; see also
`id. at 2 (stating that the Petition “is of the sort that has been called a
`‘copycat’ petition, for it is nearly identical to the Petition filed in IPR2022-
`01539”). Patent Owner, nonetheless, filed a response “to protect Patent
`Owner’s rights.” Id. In that context, Patent Owner responds that “much as
`the Petition in this case repeats the same grounds as those set forth in
`[IPR2022-01539], the present preliminary response repeats the same reasons
`and same supporting evidence set forth in Patent Owner’s preliminary
`response in that case.” Id. at 3; see also id. at 6–9 (repeating arguments
`from IPR2022-01539, Paper 6, arguing that Petitioner takes inconsistent
`claim construction positions here and in related litigation), 10–25 (repeating
`prior arguments, for the first ground, that Petitioner fails to show “cell-
`specific pilots” and “beam-formed”), 25–47 (repeating prior arguments, for
`the second ground, that Petitioner fails to show “cell-specific pilots” and “in
`at least one of the time slots”). “Patent Owner understands that the petition
`in IPR2022-01539 has already been granted over its [Preliminary Response]
`arguments” and “respectfully disagrees with the decision to institute.” Id.
`at 2.
`
`We instituted an inter partes review in the Volkswagen IPR. See
`IPR2022-01539, Paper 7 (“1539 Dec. on Inst.”). We incorporate our
`previous analysis regarding the asserted grounds of unpatentability and
`conclude that Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one claim of the ’512 patent challenged in
`
`8
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`the Petition for the same reasons. See 1539 Dec. on Inst. 9–55. Therefore,
`we determine that the Petition warrants institution of inter partes review on
`all claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a)
`(“When instituting . . . review, the Board will authorize the review to
`proceed on all of the challenged claims and on all grounds of unpatentability
`asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
`1359–60 (2018).
`B. Whether to Join Petitioner as a Party to the Volkswagen IPR
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We
`determine whether to grant joinder on a case-by-case basis, taking into
`account the particular facts of each case, substantive and procedural issues,
`and other considerations. When exercising that discretion, we are mindful
`that patent trial regulations, including the rules for joinder, must be
`construed to secure the just, speedy, and inexpensive resolution of every
`proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
`Any motion for joinder must be filed “no later than one month after
`the institution date of any inter partes review for which joinder is
`requested.” 37 C.F.R. § 42.122(b). Petitioner filed its Petition and Motion
`for Joinder before we decided whether to institute review in IPR2022-01539,
`and, thus, the Motion is timely.
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
`motion for joinder should: (1) set forth the reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`
`9
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`and discovery may be simplified. See Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); PTAB E2E
`Frequently Asked Question H5, available at https://www.uspto.gov/patents/
`ptab/ptab-e2e-frequently-asked-questions.
`1. Motion for Joinder
`Petitioner argues that “joinder is appropriate because there are no
`substantive differences between the Petition and the Volkswagen and
`Mercedes IPRs” and “[a]ll three petitions have identical unpatentability
`arguments, grounds and supporting evidence, and challenge the same
`claims.” Mot. 5. Petitioner also argues that it “may be prejudiced if it is not
`permitted to join the IPR” because the ’512 patent has been asserted against
`it in related litigation and, thus, it should be “allowed to continue the
`proceedings should the other parties settle.” Id. at 6. Petitioner further
`argues that granting joinder would “ensure that the patentability of the
`challenged claims will ultimately be decided by the Board, efficiently
`protecting the public and providing the patent owner with predictable and
`reliable expectations regarding its patent rights.” Id.
`According to Petitioner, its “Petition does not include any new
`grounds of unpatentability” and “the Petition and its accompanying expert
`declaration are substantively identical to the Volkswagen and Mercedes
`IPRs and their accompanying expert declarations.” Mot. 7. Petitioner
`argues that granting joinder would not affect the trial schedule because it
`“does not seek to introduce any new grounds or challenge any new claims,”
`and “Patent Owner will not require any discovery beyond what it will need
`in the previously filed IPRs.” Id. at 8. Petitioner states that it “will remain
`in the understudy role so long as Volkswagen or Mercedes remain in the
`
`10
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`proceeding,” and, therefore, granting joinder would not affect the trial
`schedule. Id.
`Turning to briefing and discovery, Petitioner argues that granting
`joinder “should not require any additional briefing or discovery” because its
`“Petition adds no new issues whatsoever” and it “agrees to take an
`understudy role, which will simplify briefing and discovery.” Mot. 9. “By
`Petitioner accepting an ‘understudy’ role,” Petitioner contends that “the
`parties can comply with the trial schedule assigned to the Volkswagen IPR
`without any duplicative efforts by the Board or the Patent Owner.” Id.
`“Petitioner is further willing to agree to any other reasonable
`conditions the Board deems necessary.” Mot. 10. Petitioner notes that
`Patent Owner argued for additional preconditions for joinder in the
`Mercedes IPR. Id. (citing Mercedes, Paper 7 at 2). Petitioner preemptively
`“agrees with them only to the extent the Board deems them necessary for
`joinder.” Id. Petitioner reiterates that it “has agreed to assume and remain
`in the understudy role unless Volkswagen and Mercedes are not
`participating.” Id.
`Petitioner argues that it “will rely on the testimony of its expert
`declarant (Dr. Cooklev) if, and only if, . . . Volkswagen and Mercedes are
`not participating in the joined proceedings and no petitioner expert has yet
`been deposed and the time to depose the expert has not expired.” Mot. 10.
`Petitioner also “agrees to rely entirely on, and be bound by, the declaration
`and deposition of Volkswagen’s (or Mercedes’s) expert declarant in the
`joined IPR, so long as Volkswagen (or Mercedes) remains a party until its
`expert is deposed.” Id. at 11. Petitioner, thus, argues that granting joinder
`“presents no risk of duplicative declarations, depositions, or other evidence.”
`Id.
`
`11
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`2. Patent Owner’s Response to Petitioner’s Motion for Joinder
`Patent Owner responds that “joinder should only be granted with
`additional conditions limiting Ford’s participation as joined understudy
`petitioner.” Opp. 1. Patent Owner notes that Petitioner “concedes that
`measures limiting its joined participation are appropriate, and pre-emptively
`‘agrees’ to several such limits.” Id. at 2 (citing Mot. 2, 9–10).
`Patent Owner, however, contends that Petitioner does not make clear
`what its “understudy” role entails. Opp. 2 (citing Mot. 2). In Patent
`Owner’s view, the Board should make explicit that the “understudy” role
`means that Petitioner will not make any substantive filing, will not make any
`oral hearing presentation, will not seek cross-examination testimony, and
`will not seek other discovery. Id. “Unless the promised ‘understudy role’ is
`expressly clarified as discussed below, Patent Owner respectfully opposes
`granting the subject joinder request.” Id.
`Patent Owner argues that joinder should only be granted with the
`further conditions that Petitioner “be denied any right to participate in the
`joined proceeding, including filing papers, engaging in discovery, or
`participate in depositions and oral argument, jointly or otherwise, without
`first obtaining authorization from the Board,” its “exhibits, including its
`separate expert declaration (Ex. 1035), not be added to the record of this
`case,” and it “have no right as understudy petitioner to submit any separate
`exhibits or other materials.” Opp. 3. Patent Owner also argues that joinder
`should only be granted if Petitioner “is given no right thereby to participate,
`as a joined party, without express prior Board authorization.” Id.; see also
`id. at 5–7 (arguing similarly with citations to past Board proceedings).
`According to Patent Owner, there is no proof that Volkswagen or
`Mercedes agreed to Petitioner’s limitations on its participation. Opp. 4
`
`12
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`(citing Mot. 2). Patent Owner also argues that Petitioner’s conditions on its
`participation are vague and leave open a possibility that Petitioner can insert
`itself unilaterally, contrary to past Board conditions on joinder. Id. at 8–10
`(citing Mot. 2, 8 n.2, 9, 10).
`Patent Owner contends that Petitioner “has not promised not to submit
`its own separate evidence” and has done so already by submitting its own
`declaration. Opp. 4; see also id. at 8 (citing Ex. 1035). Patent Owner also
`contends that allowing Petitioner to present its own separate, different
`evidence would hinder a “just, speedy, and inexpensive resolution” of the
`joined proceeding. Id. at 8. Patent Owner further contends that Petitioner’s
`exhibits should not become exhibits in the Volkswagen IPR. Id. at 7, 8.
`According to Patent Owner, Petitioner admits that its Petition is not
`identical to Volkswagen’s because of its Fintiv discussion. Opp. 4 (citing
`Mot. 2). Patent Owner notes that Exhibits 1001–1034 “appear identical to
`exhibits Volkswagen has previously filed” and argues that our “rules
`generally deny parties the right to the filing of duplicative exhibits without
`express Board authorization.” Id. at 10 (citing 37 C.F.R. § 42.6(d)).
`3. Petitioner’s Reply in Support of its Motion for Joinder
`Petitioner replies that Patent Owner “fails to appropriately consider
`Petitioner’s express statements that it, if joined, would take an inactive
`understudy role,” and that “Petitioner being joined as an inactive understudy
`would not present any additional burden on the Patent Owner.” Mot.
`Reply 2 (citing Mot. 2). Petitioner reiterates that it “will have no substantive
`role in that proceeding unless the petitioner in the Volkswagen IPR (either
`Volkswagen or Mercedes) ceases its own participation.” Id. (citing
`Mot. 7–8, 10).
`
`13
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`Petitioner also replies that “Patent Owner’s supposed ‘further
`conditions,’ are essentially duplicative of the restrictions that Petitioner
`already proposes on its participation in the Volkswagen IPR and thus are
`unnecessary.” Mot. Reply 2. Petitioner confirms that “it will not raise new
`grounds or introduce its own arguments or discovery and that it will not
`submit any filing unless the filing solely involves Petitioner.” Id.
`Petitioner further replies that compelling the withdrawal of
`Dr. Cooklev’s declaration “would be inappropriate and premature at this
`stage” because the declaration does not introduce new or additional
`arguments and Petitioner “agreed to rely entirely on, and be bound by, the
`declaration and deposition of Volkswagen’s (or Mercedes’s) expert
`declarant in the joined IPR.” Mot. Reply 2–3.
`4. Determining that Joinder is Appropriate
`Upon considering the parties’ arguments and the evidence presented,
`we are persuaded that it is appropriate under these circumstances to join
`Petitioner to the Volkswagen IPR. Petitioner challenges the same claims
`that are challenged in the Volkswagen IPR on the same grounds using the
`same prior art and evidence. Petitioner explicitly agrees that it will take an
`“understudy role” in the Volkswagen IPR, and has shown that the trial
`schedule will not be affected at all by joinder. See Mot. 8, 9, 10; Mot.
`Reply 2; see also Opp. 2 (“Ford has said it ‘will remain in the understudy
`role’ until the target IPR petitioner is no longer a party in the proceeding.”).
`At this stage, Patent Owner’s additional conditions are not necessary.
`See Opp. 2–3. If Petitioner fails to abide by its own conditions, then Patent
`Owner should meet and confer with Petitioner and contact the Board, if the
`parties cannot come to an agreement.
`
`14
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`For the reasons discussed above, joinder to the Volkswagen IPR
`would result in the just, speedy, and inexpensive resolution of Petitioner’s
`challenge. See 37 C.F.R. § 42.1(b). Accordingly, we grant Petitioner’s
`Motion for Joinder and join Petitioner as a party to the Volkswagen IPR.
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–30 of U.S. Patent No. 10,965,512 B2 is instituted with
`respect to all grounds set forth in the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), inter partes review of U.S. Patent No. 10,965,512 B2
`shall commence on the entry date of this Decision, and notice is hereby
`given of the institution of a trial;
`FURTHER ORDERED that Petitioner’s Motion for Joinder (Paper 3)
`with IPR2022-01539 is granted, and Petitioner is hereby joined as petitioner
`in IPR2022-01539;
`FURTHER ORDERED that the grounds on which trial in IPR2022-
`01539 were instituted are unchanged, and no other grounds are added in
`IPR2022-01539;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2022-01539 (Paper 8) shall govern the trial schedule in IPR2022-01539;
`FURTHER ORDERED that Petitioner’s role in IPR2022-01539 shall
`be limited as stated by Petitioner in the Motion for Joinder (Paper 3) unless
`and until both Volkswagen and Mercedes are terminated from that
`proceeding;
`
`15
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`FURTHER ORDERED that the case caption in IPR2022-01539 shall
`be changed to reflect joinder of Ford Motor Company as petitioner in
`accordance with the attached example;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of IPR2022-01539; and
`FURTHER ORDERED that all further filings shall be made in
`IPR2022-01539.
`
`
`
`
`
`
`
`16
`
`
`
`IPR2023-00764
`Patent 10,965,512 B2
`For PETITIONER:
`John S. LeRoy
`Christopher Smith
`LATHAM & WATKINS LLP
`jleroy@brookskushman.com
`csmith@brookskushman.com
`
`For PATENT OWNER:
`Kenneth J. Weatherwax
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`
`Hamad M. Hamad
`CALDWELL, CASSADY, & CURRY PC
`hhamad@caldwellcc.com
`
`17
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`MERCEDES-BENZ USA, LLC, and FORD MOTOR COMPANY,1
`Petitioner,
`v.
`NEO WIRELESS, LLC,
`Patent Owner.
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`
`
`
`
`
`
`
`
`
`1 Mercedes-Benz USA, LLC filed a motion for joinder and a petition in
`IPR2023-00079, and Ford Motor Company filed its own motion for joinder
`and petition in IPR2023-00764. Both motions were granted, and, therefore,
`Mercedes-Benz USA, LLC and Ford Motor Company have been joined as
`petitioners in this proceeding.
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
