`571-272-7822
`
`Paper 9
`Date: September 21, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GENERAL MOTORS LLC, NISSAN NORTH AMERICA, INC.,
`TESLA, INC., and AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`v.
`NEO WIRELESS, LLC,
`Patent Owner.
`
`IPR2023-00961
`Patent 10,965,512 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKI, and
`STEPHEN E. BELISLE, 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
`
`
`
`
`
`
`
`
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`IPR2023-00961
`Patent 10,965,512 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`General Motors LLC, Nissan North America, Inc., Tesla, Inc., and
`American Honda Motor Co., Inc., (collectively, “Petitioner”) filed a Petition
`(Paper 3, “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” or “VW IPR”). Paper 2 (“Motion” or
`“Mot.”). Neo Wireless LLC (“Patent Owner”) filed a Response to
`Petitioner’s Motion for Joinder (Paper 7, “Opp.”) but did not file a
`Preliminary Response. Petitioner subsequently filed a Reply in Support of
`its Motion for Joinder. Paper 8 (“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
`Petitioner identifies General Motors LLC; Nissan North America,
`Inc.; Tesla, Inc.; American Honda Motor Co., Inc.; General Motors Co.; LG
`Electronics, Inc.; Nissan Motor Acceptance Corporation a/k/a Nissan Motor
`Acceptance Company LLC; Quectel Wireless Solutions Co. Ltd.; and Honda
`Development & Manufacturing of America, LLC as real parties in interest.
`Pet. 2–3.
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`2
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`IPR2023-00961
`Patent 10,965,512 B2
`Patent Owner only identifies itself as a real party in interest. 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. 3–4; Mot. 1. Patent Owner
`lists current district court proceedings involving the challenged patent and
`nine proceedings that, according to Patent Owner, have been terminated.
`Paper 5, 1–3. The current proceedings include:
`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.
`
`3
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`IPR2023-00961
`Patent 10,965,512 B2
`Both parties also identify IPR2022-01539 (the Volkswagen IPR),
`IPR2023-00079, and IPR2023-00764. Pet. 4; 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-Benz”).
`Mercedes-Benz USA LLC v. Neo Wireless, LLC, IPR2023-00079, Paper 11
`(PTAB May 5, 2023) (Decision Granting Institution and Granting Motion
`for Joinder). The parties in the Mercedes IPR settled their dispute with
`respect to IPR2023-00079, IPR2022-01539, and the related district court
`litigation, and a Joint Motion to Terminate with respect to Mercedes-Benz
`was granted. Volkswagen Group of America, Inc. v. Neo Wireless, LLC,
`IPR2022-01539, Paper 21 (PTAB Aug. 15, 2023); Mercedes-Benz USA LLC
`v. Neo Wireless, LLC, IPR2023-00079, Paper 15 (PTAB Aug. 15, 2023).
`We also instituted review in IPR2023-00764 (“Ford IPR”) and
`granted a motion for joinder filed by petitioner Ford Motor Co. Ford Motor
`Co. v. Neo Wireless, LLC, IPR2023-00764, Paper 15 (PTAB July 17, 2023)
`(Decision Granting Institution and Granting Motion for Joinder).
`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.
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`4
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`IPR2023-00961
`Patent 10,965,512 B2
`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.
`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
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`IPR2023-00961
`Patent 10,965,512 B2
`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:
`Name
`Reference
`Tong
`US 7,120,395 B2, issued Oct. 10, 2006
`Li
`US 2002/0163879 A1, published Nov. 7, 2002
`Smee
`US 2004/0131007 A1, published July 8, 2004
`Ketchum US 2004/0179627 A1, published Sept. 16, 2004
`Kim
`WO 2004/049618 A1, published June 10, 2004
`
`Exhibit
`1005
`1007
`1017
`1006
`1004
`
`Pet. 6–7. 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. at 6. According to Petitioner, Kim, Tong, Ketchum, and Smee are prior
`art under, 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. at 6–7.
`Petitioner also provides a Declaration of Matthew C. Valenti, Ph.D.
`Ex. 1035 (“Valenti Declaration”). Petitioner states that Dr. Valenti “adopt[s]
`the opinions set forth in EX1003, the declaration of Dr. Paul Min submitted
`in IPR2022-01539.” Pet. 1 n.1 (citing Ex. 1035 ¶ 18).
`
`
`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. 6 (stating but not conceding that “[t]he
`’512 patent’s earliest possible priority date is January 29, 2004”).
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`IPR2023-00961
`Patent 10,965,512 B2
`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
`
`35
`U.S.C. § References/Basis
`103(a)
`Kim, Tong
`103(a)
`Ketchum, Li
`103(a)
`Ketchum, Li, Smee
`
`Pet. 7.
`
`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.
`
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`IPR2023-00961
`Patent 10,965,512 B2
`A. Whether the Petition Warrants Institution
`Petitioner states that its “Petition is substantively the same as the VW
`IPR petition.” Mot. 1. Petitioner also states that its “supporting
`materials―including its supporting expert declaration, exhibits, and exhibit
`numbering―are substantially and substantively identical to those presented
`in the VW IPR” and its “expert’s declaration agrees with and adopts the
`facts, analysis, and conclusions of the expert declaration in the VW IPR and
`does not contain any new opinions not included in the VW IPR expert
`declaration.” Id. at 6.
`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
`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
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`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 on June 2, 2023, which is one month after May 2, 2023, when we
`instituted review in IPR2022-01539. See Paper 4 (according a filing date of
`June 2, 2023). The Motion is, thus, 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
`and discovery may be simplified. See Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).
`1. Motion for Joinder
`Petitioner argues that granting its motion for joinder would promote
`efficiently determining the validity of the ’512 patent without prejudice to
`any party. Mot. 4–6. In particular, Petitioner seeks joinder so that “accused
`infringers with an active interest in the proceeding remains a party to this
`IPR if the VW IPR Petitioner’s participation is terminated prior to
`completion” and so that validity “can be determined in a single proceeding.”
`Id. at 4. Petitioner also contends joinder is appropriate because the
`challenges are identical and not substantively different to those in the VW
`IPR, and the challenges “rely on substantially the same supporting evidence”
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`as the VW IPR. Id. at 4–5. Petitioner, thus, contends that a single
`proceeding would be “more efficient and less wasteful,” “promote the public
`interest relating to the unpatentability of the ’512 patent,” and “not cause any
`undue prejudice to Patent Owner or the VW IPR Petitioner.” Id. at 5–6.
`Petitioner also argues that granting its motion for joinder would not
`add additional complexity to the grounds in the VW IPR because its
`“supporting materials―including its supporting expert declaration, exhibits,
`and exhibit numbering―are substantially and substantively identical to
`those presented in the VW IPR” and “the expert’s declaration agrees with
`and adopts the facts, analysis, and conclusions of the expert declaration in
`the VW IPR and does not contain any new opinions not included in the VW
`IPR expert declaration.” Mot. 6. Joinder, Petitioner contends, would “not
`raise any new issues of unpatentability,” would “not impose any additional
`burden on the Board or Patent Owner,” and, thus, would not “add additional
`complexity to the case.” Id. at 7.
`Petitioner further argues that joinder would not affect the schedule in
`the VW IPR because there should be “no changes to the schedule” and
`“Petitioner[] agree[s] to adhere to all applicable deadlines set forth in the
`VW IPR Scheduling Order.” Mot. 7. According to Petitioner, Patent
`Owner’s Response in the VW IPR would not be affected because the issues
`are the same and, thus, Patent Owner would not need to provide any
`additional analysis or argument. Id.
`Petitioner additionally argues that joinder would simplify briefing
`because it agrees to consolidated filings and to an understudy role if
`Volkswagen remains. Mot. 7–9. Specifically, to prevent joinder from
`imposing any burden on Volkswagen, Patent Owner, or the Board, Petitioner
`agrees “as long as the VW IPR Petitioner remains a party to the VW IPR, to
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`take an understudy role, which will simplify briefing and discovery.” Id. at
`7–8. In the understudy role, Petitioner (1) would “not make any substantive
`filing and shall be bound by the filings of the VW IPR Petitioner, unless a
`filing concerns termination and settlement, or issues solely involving
`Petitioner[],” (2) would “not present any argument or make any presentation
`at oral hearing unless an issue solely involves Petitioner[], or when
`addressing Board-approved motions that do not affect the VW IPR
`Petitioner, or its respective position,” (3) would “not seek to cross-examine
`or defend the cross-examination of any witness, unless the topic of cross-
`examination concerns issues solely involving Petitioner[],” (4) would “not
`seek discovery from Patent Owner on issues not solely involving
`Petitioner[],” (5) would “not rely on expert testimony beyond that submitted
`by the VW IPR Petitioner unless the VW IPR Petitioner is terminated from
`the case prior to any necessary depositions,” and (6) would “agree to rely
`entirely on, and be bound by, the expert declarations and depositions in the
`VW IPR,” if Volkswagen is not terminated before depositions. Id. at 8–9.
`Because Petitioner would be in an understudy role, it contends that
`“Patent Owner and the VW IPR Petitioner will only need to respond to one
`principal set of papers, will not require additional time to address additional
`arguments, and can thus proceed with the existing trial schedule,” thereby
`minimizing any complications or delays that joinder could potentially cause.
`Mot. 9. Petitioner also states that it would “abide by any additional
`conditions the Board deems appropriate for an ‘understudy’ role.” Id.
`Petitioner finally argues that joinder would not result in prejudice to
`Patent Owner because “[n]o additional grounds or arguments are being
`introduced, no new evidence or issues are being added, and no additional
`discovery or briefing or oral argument should be necessary.” Mot. 9–10.
`
`11
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`IPR2023-00961
`Patent 10,965,512 B2
`According to Petitioner, “Patent Owner would not need to expend any
`additional resources beyond those required in the current VW IPR.” Id. at
`10.
`
`2. Patent Owner’s Response to Petitioner’s Motion for Joinder
`Patent Owner responds that joinder “should only be granted with
`additional conditions limiting [Petitioner]’s participation as joined
`understudy petitioner.” Opp. 1. Patent Owner notes that it “respectfully
`disagrees with the decision to grant joinder without formally imposing such
`conditions in IPR2023-00079” and that “multiplying grants of joinder
`increase the likelihood of resulting cost and delay.” Id. at n.1. Patent Owner
`also 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, 7–9).
`Patent Owner, however, contends that Petitioner does not make clear
`what its “understudy” role entails. Opp. 2 (citing Mot. 1–2). 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. at 2–3. “Unless the promised ‘understudy
`role’ is expressly clarified as discussed below, Patent Owner respectfully
`opposes granting the subject joinder request.” Id. at 3.
`Patent Owner argues that joinder should only be granted with the
`further conditions that (1) 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,” (2) its “exhibits, including its
`separate expert declaration (Ex. 1035), not be added to the record of this
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`Patent 10,965,512 B2
`case,” and (3) 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.
`at 4.
`
`Patent Owner contends that Petitioner “has not promised not to submit
`its own separate evidence,” “giv[en] itself multiple potential carve-outs
`wherein it might potentially deem itself permitted to submit evidence or
`briefing” if an issue involves only Petitioner or does not affect Volkswagen,
`and has already submitted its own evidence, including its own declaration.
`Opp. 4 (citing Mot. 8); see also id. at 10 (arguing Petitioner “does not agree
`to not file separate exhibits nor does it explicitly agree not to file briefing,
`simply stating that ‘[t]hese limitations will avoid . . . duplicative briefing’ . .
`. , while at the same time giving itself multiple carve-outs wherein it can file
`briefing or advance arguments” and that the Valenti Declaration has already
`been filed separately) (citing Mot. 2, 7–9). Patent Owner also contends that
`Petitioner’s stated conditions for limiting its participation “present potential
`loopholes.” Id. at 4–6 (citing Mot. 7–9).
`According to Patent Owner, the conditions “should be augmented”
`because they do not extend to issues involving only Petitioner, or some other
`“carve-out,” that would allow potential direct involvement. Opp. 6 (citing
`Mot. 8). Patent Owner also argues that Petitioner does not clarify what “a
`‘necessary’ deposition would be.” Id. (citing Mot. 8–9). Patent Owner
`further provides its understanding of past Board proceedings where
`additional restrictions were imposed on joined petitioners and argues for
`similar additional conditions in this proceeding. Id. at 6–9.
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`Patent Owner argues that Petitioner “does not even agree to proceed
`solely on the grounds, evidence, and arguments advanced in the Volkswagen
`IPR if it is instituted, instead attempting to carve out multiple situations” that
`would allow presenting arguments, filing briefs, seeking discovery, and
`cross-examining witnesses. Opp. 11 (citing Mot. 7–9). Patent Owner also
`argues that Petitioner “has not limited itself, or Volkswagen, from presenting
`different arguments” based on its separately filed Valenti Declaration and
`has not stated that Volkswagen would not rely on or take deposition of Dr.
`Valenti. Id. (citing Mot. 9). Patent Owner further argues that Petitioner
`could submit its own separate evidence, if it unilaterally determines that it is
`appropriate. Id. at 11–12 (citing Mot. 8).
`Patent Owner also argues that Petitioner’s exhibits should not become
`exhibits in the Volkswagen IPR. Opp. 10. Patent Owner 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 11. According to Patent Owner, Petitioner’s separate exhibits should
`be withdrawn and not become part of the joined proceeding. Id.
`Patent Owner describes other Board proceedings where joinder was
`granted “only on the simple, efficient condition that the joined petitioner use
`the witness declaration of the existing party, and indeed that, if it has filed a
`declaration, that the declaration be withdrawn.” Opp. 12. Patent Owner
`contends that joinder should only be granted in this proceeding with this
`additional condition. Id.
`According to Patent Owner, Petitioner’s other exhibits appear to be
`identical to ones filed in IPR2022-01539. Opp. 12 (citing Exs. 1001–1032).
`Patent Owner argues that the filing of duplicative exhibits requires Board
`authorization. Id. at 12–13 (citing 37 C.F.R. § 42.6(d)).
`
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`3. Petitioner’s Reply in Support of its Motion for Joinder
`Petitioner replies that its Petition is substantively the same as the
`Volkswagen IPR and challenges the same claims on the same grounds using
`the same prior art. Mot. Reply 1. Petitioner reaffirms that, “if joinder is
`granted, it will act as an ‘understudy’ and will not assume an active role
`unless the Volkswagen IPR Petitioner ceases to participate in the
`proceeding.” Id. Petitioner “agree[s] to abide by numerous conditions for
`the ‘understudy’ role.” Id. (citing Mot. 7–9).
`Petitioner argues that Patent Owner’s additional conditions are
`“unnecessary because Petitioner’s stipulated conditions are consistent with
`the Board’s practice” and the additional conditions would be “contrary to the
`Board’s practice.” Mot. Reply 2 (citing Opp. 2–3, 11). Petitioner also
`argues that its agreed-to conditions “already limit Petitioner’s participation
`in a manner consistent with the Board’s practice by limiting additional
`discovery, briefing, and oral argument.” Id. at 2–3 (citing Mot. 7–9).
`According to Petitioner, “[t]he Board routinely grants motions for joinder
`where petitioner agrees to participate as Petitioner proposes here.” Id. at 3.
`Regarding Patent Owner’s additional condition that the Valenti
`Declaration be withdrawn, Petitioner replies that “the Board routinely grants
`joinder without requiring the joined petitioner to withdraw its exhibits when
`substantially the same evidence was filed as in the existing proceeding” and
`“the Board routinely permits a joining party to submit separate filings in a
`limited ‘understudy’ role.” Mot. Reply 3–4. Petitioner also contrasts the
`facts of the Board proceedings cited by Patent Owner and this proceeding.
`Id. at 4–5. In Petitioner’s view, its “supporting materials―including its
`supporting expert declaration, exhibits, and exhibit numbering―are
`substantially identical to those presented in the Volkswagen IPR;” its
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`declaration “does not contain any new opinions not included in the
`Volkswagen IPR expert declaration;” and “unity of exhibits and exhibit
`numbering with the Volkswagen IPR has been maintained.” Id. at 5.
`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. 1–2, 7–9;
`Mot. Reply 1; see also Opp. 2 (noting that Petitioner “has said it ‘will act as
`an “understudy”’ unless 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. 3–4, 9–10. 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.
`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.
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`IPR2023-00961
`Patent 10,965,512 B2
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`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 2)
`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;
`FURTHER ORDERED that Petitioner’s role in IPR2022-01539 shall
`be limited as stated by Petitioner in the Motion for Joinder (Paper 2) unless
`and until Volkswagen is terminated from that proceeding;
`FURTHER ORDERED that the case caption in IPR2022-01539 shall
`be changed to reflect joinder of General Motors LLC, Nissan North
`America, Inc., Tesla, Inc., and American Honda Motor Co., Inc., as
`petitioners in accordance with the attached example;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of IPR2022-01539; and
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`IPR2023-00961
`Patent 10,965,512 B2
`FURTHER ORDERED that all further filings shall be made in
`IPR2022-01539.
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`IPR2023-00961
`Patent 10,965,512 B2
`For PETITIONER:
`Timothy Riffe
`Usman Khan
`John Johnson
`Jeffrey Mok
`FISH & RICHARDSON P.C.
`riffe@fr.com
`khan@fr.com
`jjohnson@fr.com
`jmok@fr.com
`
`Reginald Hill
`Nicole Keenan
`JENNER & BLOCK LLP
`rhill@jenner.com
`nkeenan@jenner.com
`
`For PATENT OWNER:
`Kenneth J. Weatherwax
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteiweatherwax.com
`
`Hamad M. Hamad
`CALDWELL, CASSADY, & CURRY PC
`hhamad@caldwell.com
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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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`VOLKSWAGEN GROUP OF AMERICA, INC.,
`FORD MOTOR COMPANY, GENERAL MOTORS LLC,
`NISSAN NORTH AMERICA, INC., TESLA, INC., and
`AMERICAN HONDA MOTOR CO., INC., 1
`Petitioner,
`v.
`NEO WIRELESS, LLC,
`Patent Owner.
`
`IPR2022-01539
`Patent 10,965,512 B2
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`1 Ford Motor Company filed a motion for joinder and a petition in IPR2023-
`00764, and General Motors LLC, Nissan North America, Inc., Tesla, Inc.,
`and American Honda Motor Co., Inc., filed their own motion for joinder and
`petition in IPR2023-00961. Both motions were granted, and, therefore, Ford
`Motor Company, General Motors LLC, Nissan North America, Inc., Tesla,
`Inc., and American Honda Motor Co., Inc., have been joined as petitioners
`in this proceeding.
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