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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MERCEDES-BENZ USA, LLC.
`Petitioner
`v.
`NEO WIRELESS, LLC
`Patent Owner
`
`Case (to be assigned)
`U.S. Patent No. 10,965,512
`
`Filed on behalf of Petitioner:
`Celine Jimenez Crowson (Reg. No. 40,357)
`Joseph J. Raffetto (Reg. No. 66,218)
`Scott Hughes (Reg. No. 68,385)
`Helen Y. Trac (Reg. No. 62,250)
`HOGAN LOVELLS US LLP
`555 13th Street N.W.
`Washington, D.C. 20004
`Telephone: 202.637.5600
`Facsimile: 202.637.5710
`
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`I.
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`Statement of Precise Relief Requested
`Mercedes-Benz USA LLC (“Petitioner”) respectively submits this Motion for
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`Joinder, concurrently with a Petition for inter partes review of U.S. Patent No.
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`10,965,512 (the “’512 patent”).
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner moves
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`for joinder with any inter partes review that is instituted as to the ’512 patent in
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`Volkswagen Group of America, Inc. v. Neo Wireless, Inc., IPR2022-01539 (the
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`“Volkswagen IPR”). Petitioner requests that action on this motion be held in
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`abeyance until, and the motion be granted if, the Volkswagen IPR is instituted.
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`Should the Volkswagen IPR be terminated prior to any institution decision or
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`otherwise not instituted for any reason, Petitioner submits this motion for joinder
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`would be moot, and requests the Board consider Petitioner’s inter partes review
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`petition on its own merits. This motion is timely because it is being filed before
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`institution of the Volkswagen IPR.
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`Petitioner requests institution of its Petition for inter partes review filed
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`concurrently herewith. The Petition is substantively the same as the Volkswagen
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`IPR petition. It challenges the same claims, on the same grounds, and relies on the
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`same prior art as the Volkswagen IPR petition. Accordingly, no additional burden
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`would be created for the Board, the Volkswagen IPR petitioner, or Patent Owner if
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`joined. Joinder would therefore lead to an efficient resolution of the invalidity of the
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`’512 patent.
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`Petitioner agrees to proceed solely on the grounds, evidence, and arguments
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`advanced, or that will be advanced, in the Volkswagen IPR if it is instituted. The
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`Petition therefore warrants institution under 35 U.S.C. § 314, and 35 U.S.C. § 315(c)
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`permits Petitioner’s joinder to the Volkswagen IPR if it is instituted.
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`Petitioner stipulates that if joinder is granted, it will act as an “understudy”
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`and will not assume an active role unless the Volkswagen IPR petitioner ceases to
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`participate in the proceeding. The Volkswagen IPR petitioner will maintain the lead
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`role in the proceeding so long as it remains in the proceeding. These limitations will
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`avoid lengthy and duplicative briefing. Petitioner also will not seek additional
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`depositions or deposition time. Accordingly, the proposed joinder will neither
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`unduly complicate the Volkswagen IPR nor delay its schedule.
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`Joinder will not unduly prejudice any party. Because joinder will not add any
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`new substantive issues, delay the schedule, burden deponents, or increase needless
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`filings, any additional costs on the Patent Owner would be minimal. On the other
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`hand, denial of joinder would prejudice Petitioner. Petitioner’s interests may not be
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`adequately protected in the Volkswagen IPR, particularly if the Volkswagen IPR
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`petitioner settles with the Patent Owner. Petitioner should be allowed to join in a
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`proceeding affecting a patent asserted against it.
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`II.
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`Statement of Reasons for the Relief Requested
`A.
`Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an existing
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`IPR proceeding. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Sony
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`Mobile Commc’ns. AB v. Ancora Techs., Inc., IPR2021-00663, Paper 17, at 29-33;
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`Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony
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`Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326,
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`Paper 15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at
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`3-4.
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`“The Board will determine whether to grant joinder on a case-by-case basis,
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`taking into account the particular facts of each case, substantive and procedural
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`issues, and other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants
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`bear the burden of proof in establishing entitlement to the requested relief. 37 §§
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`42.20(c), 42.122(b). A motion for joinder should:
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`(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.
`Dell, IPR2013-00385, Paper 19, at 4.
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`Joinder with the Proceeding Is Appropriate
`B.
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper No.
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`12 at 9 (Aug. 24, 2016) (emphasis added) (internal quotations and citations omitted).
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`Here, in the event the Volkswagen IPR is instituted, joinder is appropriate
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`because the Petition introduces identical unpatentability arguments and the same
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`grounds raised in the Volkswagen IPR petition. In other words, both petitions
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`contain the same grounds based on the same prior art combinations and supporting
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`evidence against the same claims. There are no substantive differences between the
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`Petition and the Volkswagen IPR petition. Petitioner also relies on substantially the
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`same supporting evidence in the Petition as is relied on in the Volkswagen IPR.
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`Because these proceedings introduce identical unpatentability arguments and the
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`same grounds, good cause exists for joinder, so that the Board, consistent with 37
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`C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
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`resolution” of this proceeding and the Volkswagen IPR.
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`Moreover, Petitioner notes that the Board has indicated that the factors
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`outlined by General Plastics are not particularly relevant here “where a different
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`petitioner files a ‘me-too’ or ‘copycat’ petition in conjunction with a timely motion
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`to join.” See, e.g., Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 9-
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`11; Pfizer, Inc. v Genentech, Inc., IPR2017-02063, Paper 25 at 7-8. This is
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`Petitioner’s first challenge against the ’512 patent at the PTAB, and there is no risk
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`of prejudice or abuse. Rather, through grant of this joinder, the Board is simply
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`offered the opportunity to ensure that the Volkswagen IPR is not prematurely
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`terminated based on opportunistic settlement or dismissal by Patent Owner with
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`fewer than all parties against which it has asserted the subject patent.
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`C.
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`Joinder Will Not Add Any New Grounds of Unpatentability or
`Impact the Trial Schedule
`The Petition is based on the same grounds and combinations of prior art in the
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`Volkswagen IPR petition. For simplicity and efficiency, Petitioner has copied the
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`substance of the Volkswagen IPR petition and its accompanying expert declaration.
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`While Petitioner uses its own expert declarant, the expert’s declaration agrees with
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`the facts, analysis, and conclusions of the expert declaration in the Volkswagen IPR
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`and does not contain any new opinions not included in the Volkswagen IPR expert
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`declaration. See Everlight Elecs. Co., v. Document Security Sys., Inc., IPR2018-
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`01260, Paper No. 12 at 6-7 (Nov. 14, 2018) (granting motion for joinder where
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`petitioner submitted separate but substantially identical expert declaration); see also
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`Celltrion, IPR2018-01019, Paper No. 11 at 14 (same); Sun Pharm. Indus. Ltd. v.
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`Merck Sharp & Dohme Corp., IPR2020-01072, Paper No. 12 at 7 (Sept. 1, 2020)
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`(same).
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`Petitioner does not seek to introduce grounds or claims not currently in the
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`Volkswagen IPR and seeks only to join the proceeding if and as instituted. Patent
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`Owner should not require any discovery beyond that which it may need in the
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`Volkswagen IPR. The Petition introduces no new substantive issues relative to the
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`Volkswagen IPR and does not seek to broaden the scope of the Volkswagen IPR.
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`There are no new issues for the Board to address, and Patent Owner will not be
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`required to present any additional responses or arguments.
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`The Patent Owner’s Response, if any, will also not be negatively impacted
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`because the substantive issues presented in the Petition are identical to the issues
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`presented in the Volkswagen IPR. Patent Owner will not be required to provide any
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`additional analysis or arguments beyond what it will already provide in responding
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`to the Volkswagen IPR petition.
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`Accordingly, joinder with the Volkswagen IPR does not unduly burden or
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`negatively impact the trial schedule.
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`Procedures to Simplify Briefing and Discovery
`D.
`Petitioner agrees to take an “understudy” role, which will simplify briefing
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`and discovery. Specifically, Petitioner agrees, upon joining the Volkswagen IPR,
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`that the following conditions, as previously approved by the Board in similar
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`circumstances, shall apply so long as the Volkswagen IPR petitioner remains an
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`active party:
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`a.
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`all filings by Petitioner in the Volkswagen IPR shall be consolidated
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`with the filings of the Volkswagen IPR petitioner, unless a filing
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`concerns issues solely involving Petitioner;
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`b.
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`Petitioner shall not be permitted to raise any new grounds not instituted
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`by the Board in the Volkswagen IPR, or introduce any argument or
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`discovery not introduced by the Volkswagen IPR petitioner;
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`c.
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`Petitioner shall be bound by any agreement between Patent Owner and
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`the Volkswagen IPR petitioner concerning discovery and depositions;
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`and
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`d.
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`Petitioner at deposition shall not receive any direct, cross examination,
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`or redirect time beyond that permitted under either 37 C.F.R. § 42.53
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`or any agreement between Patent Owner and the Volkswagen IPR
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`petitioner. See Noven Pharms., Inc. v. Novartis AG, IPR2014-00550,
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`Paper No. 38 at 5 (Apr. 10, 2015).
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`Unless and until the Volkswagen IPR petitioner ceases to participate,
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`Petitioner will not assume an active role in the Volkswagen IPR. Petitioner will not
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`rely on expert testimony beyond that submitted by the Volkswagen IPR petitioner
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`unless the Volkswagen IPR petitioner is terminated from the case prior to any
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`necessary depositions. Thus, Petitioner’s expert Mr. McNair would not be relied on
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`if the Volkswagen IPR petitioner’s expert remains available.
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`By Petitioner accepting an “understudy” role, the parties can comply with the
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`trial schedule assigned to the Volkswagen IPR without needing any duplicative
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`efforts by the Board or the Patent Owner. These steps minimize the possibility of
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`any complication or delay from joinder. See LG, IPR2015-01353, Paper No. 11 at 6-
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`7 (granting IPR and motion for joinder because “joinder would increase efficiency
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`by eliminating duplicative filings and discovery, and would reduce costs and burdens
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`on the parties as well as the Board” where petitioners agreed to an “understudy”
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`role). Petitioner is further willing to agree to any other reasonable conditions the
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`Board deems necessary.
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`III. Conclusion
`Joinder will not affect the substance, procedure, or scheduling of the
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`Volkswagen IPR. Petitioner files this motion under the statutory joinder provisions
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`as contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`For the foregoing reasons, Petitioner respectfully requests inter partes review
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`of U.S. Patent No. 10,965,512 and joinder with Volkswagen Group of America, Inc.
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`v. Neo Wireless, Inc., IPR2021-01539 if it is instituted.
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`Dated: October 19, 2022
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`Respectfully submitted,
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`/s/ Celine J. Crowson
`Celine Jimenez Crowson (Reg. No. 40,357)
`Joseph J. Raffetto (Reg. No. 66,218)
`Scott Hughes (Reg. 68,385)
`Helen Y. Trac (Reg. No. 62,250)
`HOGAN LOVELLS US LLP
`555 13th Street N.W.
`Washington, D.C. 20004
`Telephone: 202.637.5600
`Facsimile: 202.637.5910
`Counsel for Petitioner
`Mercedes-Benz USA, LLC
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`CERTIFICATE OF SERVICE
`I certify that on October 19, 2022, a copy of this Petition and supporting
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`documents were served on Patent Owner via Overnight Courier at the following
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`address of record and addresses known to Petitioner as likely to effect service and
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`the address of record for the ’512 patent:
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`Volpe Koenig
`30 South 17th Street, 18th Floor
`Philadelphia, PA 19103
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`Caldwell Cassady & Curry
`2121 N. Pearl St.
`Suite 1200
`Dallas, Texas 75201
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`/Stephanie McDonough/
`Stephanie McDonough
`IP Specialist
`
`Hogan Lovells US LLP
`609 Main Street, Suite 4200
`Houston, TX 77002
`Telephone: (713) 632.1400
`Facsimile: (713) 632.1401
`
`