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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES-BENZ USA, LLC.
`Petitioner,
`
`v.
`
`NEO WIRELESS, LLC
`Patent Owner
`____________
`
`Case IPR2023-00079
`Patent US 10,965,512
`____________
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Page
`INTRODUCTION ......................................................................................... 1
`
`IF JOINED, MERCEDES SHOULD HAVE NO RIGHT TO TAKE
`ACTIONS WITHOUT PRIOR BOARD AUTHORIZATION. ............... 3
`
`III. MERCEDEZ-BENZ USA SHOULD BE PROHIBITED FROM
`OFFERING ITS OWN SEPARATE EVIDENCE. .................................... 5
`
`IV. MERCEDES-BENZ USA’S PROMISES OF COOPERATION BY
`VOLKSWAGEN ARE UNSUBSTANTIATED AND INSUFFICIENT. . 7
`
`V. CONCLUSION .............................................................................................. 9
`
`
`
`i
`
`
`
`
`
`DECISIONS
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Argentum Pharma. LLC v. Janssen Oncology Inc.,
`IPR2016-01317, Paper 9 (Sep. 19, 2016) ............................................................. 7
`
`GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge I,
`IPR2017-00919, Paper 12 (PTAB Jun. 9, 2017) .................................................. 4
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01453, Papers 16, 35, 36 (PTAB Mar. 14, Jun. 27, & Jul. 26, 2016) ... 5
`
`Lupin Ltd. v. Senju Pharm. Co., Ltd.,
`IPR2015-01871, Paper 13 (PTAB Jan. 25, 2016) ................................................ 9
`
`Mylan Pharms. Inc. v. Janssen Oncology, Inc.,
`IPR2016-01332, Paper 21 (PTAB Jan. 10, 2017) ................................................ 7
`
`Samsung Elecs. Co. v. Arendi S.A.R.L.,
`IPR2014-01144, Paper 11 (PTAB Oct. 2, 2014) .................................................. 9
`
`Sony Corp. of Am. v. Network-1 Security Solutions, Inc.,
`IPR2013-00386, Paper 16 (PTAB Jul. 29, 2013) .............................................1, 7
`
`Synaptics Inc. v. Amkor Tech., Inc.,
`IPR2017-00085, Paper 12 (PTAB Apr. 18, 2017) ............................................... 1
`
`REGULATIONS
`
`37 C.F.R. § 42.1(b) .................................................................................................... 7
`
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`37 C.F.R. § 42.20(c) ................................................................................................... 1
`
`37 C.F.R. § 42.6(d) .................................................................................................... 7
`
`ii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner Neo Wireless, LLC hereby responds to Petitioner Mercedes-
`
`Benz USA, LLC’s (“Mercedes”) Motion For Joinder (Paper 3, “Mot.”) of this IPR
`
`with IPR2022-01539 filed by Volkswagen Group of America, Inc.
`
`(“Volkswagen”). This motion is timely under the Board’s order and extension
`
`granted by email on November 21, 2022.
`
`“Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary.” Sony Corp. of Am. v. Network-1 Security Sols., Inc.,
`
`IPR2013-00386, Paper 16, 3 (July 29, 2013). As moving party, Mercedes has the
`
`burden to establish entitlement to relief. 37 C.F.R. §§ 42.20(c), 42.122(b).1
`
`If the Board institutes review in this case, joinder should only be granted
`
`with additional conditions limiting Mercedes’s participation as joined understudy
`
`petitioner, such as those the Board has imposed in other cases, to reduce the
`
`inarguable burden the requested joinder will create in these speedy proceedings.
`
`Mercedes concedes that measures limiting its joined participation are
`
`appropriate, and pre-emptively “agrees” to several such limits. Mot., 3, 7-8. The
`
`
`1 The Motion is moot if review of Mercedes’s or Volkswagen’s Petition is
`
`denied. See Synaptics Inc. v. Amkor Tech., Inc., IPR2017-00085, Paper 12, 11
`
`(Apr. 18, 2017). This Response assumes, arguendo, institution of both petitions.
`
`1
`
`
`
`
`
`Board should, however, grant joinder only with further limits in addition to these.
`
`At the very least, Patent Owner respectfully submits that the Board should grant
`
`joinder only on the further conditions:
`
`(1) That Mercedes 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; In other words, Patent Owner
`
`requests that the Board strictly hold Mercedes to a silent understudy role;
`
`(2) That Mercedes’ exhibits, including its separate purported expert
`
`declaration (Ex. 1038), not be added to the record of this case, and that
`
`Mercedes have no right as understudy petitioner to submit any separate
`
`exhibits or other materials; and
`
`(3) If the Board rejects Patent Owner’s condition (1) immediately above, and
`
`grants Mercedes a right to jointly participate, that Volkswagen be shown
`
`to have accepted the role Mercedes has proposed that it will play.
`
`In the absence of clarity on what “understudy” means, granting joinder
`
`would create unacceptable risks of making the original case, if instituted,
`
`substantially more complicated, expensive, and unfair. Therefore, unless the
`
`promised “understudy” role is expressly clarified as requested above, and as
`
`2
`
`
`
`
`
`discussed in greater detail below, Patent Owner respectfully opposes granting
`
`Mercedes’ joinder request.
`
`II.
`
`IF JOINED, MERCEDES SHOULD HAVE NO RIGHT TO TAKE
`ACTIONS WITHOUT PRIOR BOARD AUTHORIZATION.
`
`As in past proceedings in which parties have been permitted to join as
`
`understudy petitioners, the Board should grant Mercedes’s joinder request only if
`
`Mercedes has no right to participate without express prior Board authorization.
`
`Moreover, as further explained infra §§ III-IV, while Mercedes has “agreed”
`
`to let Volkswagen take the “lead” (Mot., 3), Mercedes presents no proof that
`
`Volkswagen agrees to the limitations Mercedes says Volkswagen will follow, and
`
`furthermore, Mercedes has not promised not to submit its own separate evidence.
`
`Indeed, Mercedes has already begun to submit its own separate evidence, including
`
`separate witness testimony, and, if joinder were granted, may continue to
`
`separately proffer more.
`
`In light of such factors, as well as the fact that Mercedes has already agreed
`
`that if joined it will submit no separate arguments—essentially, to act as an
`
`understudy to Volkswagen—if joinder is granted, there is no apparent reason why
`
`Mercedes should be given any right to take any action in the proceedings without
`
`prior express Board permission.
`
`3
`
`
`
`
`
`In similar factual circumstances, the Board’s past remedy for these concerns,
`
`where it has not denied the joinder request altogether, has been to allow joinder
`
`only on condition that the joining petitioner has no right to participate or submit
`
`any materials or arguments without express permission from the Board. For
`
`example, in GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge I, IPR2017-
`
`00919, the petitioner seeking joinder made promises essentially similar to
`
`Mercedes’s. The petitioner promised that, if joinder were granted, it would stay
`
`“in a circumscribed ‘understudy’ role without a separate opportunity to actively
`
`participate,” and “w[ould] not file additional written submissions, nor . . . pose
`
`questions at depositions or argue at oral hearing without permission of” the first
`
`petitioner. Id., Paper 12, 8-9 (June 9, 2017).
`
`The Board “agree[d] with Patent Owner, though, that given its ‘understudy’
`
`role, Petitioner should be permitted to file papers, engage in discovery, and
`
`participate in depositions and oral argument only after obtaining authorization
`
`from the Board, not [the first petitioner].” Id., 9. The Board therefore granted the
`
`petitioner’s motion for joinder only on the condition that the petitioner would have
`
`no right to participate in the joined proceedings at all, and would have to contact
`
`the Board to request permission before taking any action. See id.
`
`If joinder were to be granted here, the same condition should be imposed as
`
`in GlobalFoundries. There would be no more justification for Mercedes to have
`
`4
`
`
`
`
`
`any right to participate than in that case. As in GlobalFoundries, the Board should
`
`not grant Mercedes’s joinder request except, inter alia, under the condition that
`
`Mercedes be limited to the role of a silent understudy, with no right to file papers,
`
`engage in discovery, or participate in depositions and oral argument without first
`
`obtaining authorization from the Board. The Board should strictly hold Mercedes
`
`to this silent understudy role.
`
`III. MERCEDEZ-BENZ USA SHOULD BE PROHIBITED FROM
`OFFERING ITS OWN SEPARATE EVIDENCE.
`
`Regardless of other restrictions the Board places on Mercedes, if its joinder
`
`request is granted, Mercedes’ exhibits in this case, including its separate witness
`
`declaration, should not become exhibits in this case, and Mercedes should be
`
`granted no right to file any exhibits in the joined case.
`
`Mercedes pledges that if joined, it will refrain from certain independent
`
`action, including that it will “agree[] to proceed solely on the grounds, evidence,
`
`and arguments advanced, or that will be advanced, in the Volkswagen IPR if it is
`
`instituted.” (Mot., 3). Mercedes does not agree to not file separate exhibits.2
`
`
`2 Or, for that matter, to not serve proposed exhibits. Compare, e.g., Johns
`
`Manville Corp. v. Knauf Insulation, Inc., IPR2015-01453, Papers 16, 35, 36
`
`5
`
`
`
`
`
`Indeed, Mercedes has of course already begun to file separate exhibits,
`
`including an expert declaration signed by Mr. Bruce McNair, whose testimony
`
`does not appear as an exhibit in the Volkswagen IPR. Ex. 1038.
`
`To be sure, Mercedes “agrees to proceed solely on the grounds, evidence,
`
`and arguments advanced, or that will be advanced, in the Volkswagen IPR if it is
`
`instituted.” Mot., 3, 6-7. But Mercedes does not agree not to rely on Mercedes’s
`
`separate witness (Mr. Bruce McNair), and has not limited itself, or Volkswagen,
`
`from presenting different arguments with respect to Mercedes’s separate witness.
`
`In sum, adding Mr. McNair’s declaration to the record would be contrary to
`
`the rules governing inter partes reviews, designed “to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b).
`
`All of Mercedes’ other separately filed exhibits, in addition to the McNair
`
`declaration, should be required to be withdrawn and should not become part of the
`
`record of the joined proceedings. Notably, almost all of Mercedes’s other exhibits
`
`(Ex. 1001 to Ex. 1034) are identical to exhibits Volkswagen has previously filed.
`
`The rules generally deny parties the right to the filing of duplicative exhibits
`
`without express Board authorization. See 37 C.F.R. § 42.6(d) (“A document
`
`
`(PTAB Mar. 14, Jun. 27, & Jul. 26, 2016) (Board had to rule on two subpoena
`
`requests because party served supplemental information, including testimony).
`
`6
`
`
`
`
`
`already in the record of the proceeding must not be filed again, not even as an
`
`exhibit or an appendix, without express Board authorization.”)
`
`
`
`In other proceedings, the Board has granted joinder only on the 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. See,
`
`e.g., Mylan Pharms. Inc. v. Janssen Oncology, Inc., IPR2016-01332, Paper 21, 9-
`
`11 (Jan. 10, 2017) (denying joinder largely because of different experts); Argentum
`
`Pharma. LLC v. Janssen Oncology Inc., IPR2016-01317, Paper 9, 9 (Sep. 19,
`
`2016) (requiring joining petitioner to withdraw declaration of its expert and rely
`
`solely on declaration testimony of first petitioner’s expert); Sony, IPR2013-00386,
`
`Paper 16, 7 (denying joinder because, inter alia, “Petitioners also include with their
`
`Petition a declaration from [a new expert declarant], which likely would increase
`
`the amount of discovery (e.g., depositions) that would be required if joinder is
`
`permitted.”) (citation omitted). Mercedes’s joinder request should be granted only
`
`on, inter alia, this condition.
`
`IV. MERCEDES-BENZ USA’S PROMISES OF COOPERATION BY
`VOLKSWAGEN ARE UNSUBSTANTIATED AND INSUFFICIENT.
`
`Finally, Mercedes’s request relies heavily on assurances as to how
`
`Volkswagen, the petitioner in IPR2022-01539, will act in the “consolidated”
`
`proceedings Mercedes proposes. Mot., 7-8. But Mercedes offers no substantiation
`
`7
`
`
`
`
`
`of those assurances. Mercedes does not aver that Volkswagen has agreed to abide
`
`by them, or that it has spoken to Volkswagen at all.
`
`In its Motion for Joinder, Mercedes asserts, inter alia, that:
`
`a. all filings by [Mercedes] in the Volkswagen IPR shall be
`
`consolidated with the filings of the Volkswagen IPR petitioner,
`
`unless a filing concerns issues solely involving [Mercedes];
`
`b. [Mercedes] shall not be permitted to raise any new grounds not
`
`instituted by the Board in the Volkswagen IPR, or introduce any
`
`argument or discovery not introduced by the Volkswagen IPR
`
`petitioner;
`
`c. [Mercedes] shall be bound by any agreement between Patent
`
`Owner and the Volkswagen IPR petitioner concerning discovery
`
`and depositions; and;
`
`d. [Mercedes] at deposition shall not receive any direct, cross
`
`examination, or redirect time beyond that permitted under either 37
`
`C.F.R. § 42.53 or any agreement between Patent Owner and the
`
`Volkswagen IPR petitioner.
`
`Mot., 7-8.
`
`However, Mercedes offers no evidence or averments substantiating that
`
`Volkswagen has agreed to any of this. Mercedes says that it “agrees” to all these
`
`conditions, but nowhere avers that Volkswagen agrees to these conditions. See id.
`
`The risks of disruption if Volkswagen has not agreed to the role and the
`
`restrictions that Mercedes proposes are manifest. For example, if joinder is
`
`8
`
`
`
`
`
`granted, then in addition to making “consolidated” filings with Mercedes, as
`
`Mercedes “agrees” to do in its Motion, Volkswagen could also make separate,
`
`additional arguments, and file additional evidence and papers, that are not
`
`“consolidated” with Mercedes.
`
`The Board has required such promises of post-joinder cooperation from a
`
`first petitioner to be substantiated if joinder is granted. Compare, e.g., Samsung
`
`Elecs. Co. v. Arendi S.A.R.L., IPR2014-01144, Paper 11, 6 (Oct. 2, 2014) (denying
`
`joinder where, inter alia, joinder motion was silent as to whether first petitioner
`
`had agreed to cooperate as promised), with, e.g., Lupin Ltd. v. Senju Pharm. Co.,
`
`Ltd., IPR2015-01871, Paper 13, 4-5 (Jan. 25, 2016) (granting joinder after
`
`petitioners substantiated their agreement to cooperate).
`
`The absence of proof that Volkswagen has agreed to its competitor
`
`Mercedes’s proposed terms of joint participation weighs in favor of denying
`
`Mercedes the right to participate without first obtaining permission of the Board.
`
`See supra § II. However, if joinder is granted as Mercedes has proposed, it should
`
`be granted only on the condition that Mercedes’s assertions of Volkswagen’s
`
`cooperation (regarding consolidated filings) are substantiated.
`
`V. CONCLUSION
`
`For the reasons given above, Patent Owner respectfully urges that joinder
`
`not be granted on the basis of Mercedes’s pledge of “understudy” status, in the
`
`9
`
`
`
`
`
`absence of clarity as to what that status means. Patent Owner respectfully submits
`
`that, if Mercedes’s petition is instituted, joinder should be granted only with the
`
`conditions described above.
`
`Respectfully submitted,
`
`____/ Kenneth J. Weatherwax /_________
`
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
`
`Date: January 20, 2023
`
`
`
`10
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`on the date below and to the addresses listed below:
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION
`FOR JOINDER
`
`
`The names and address of the parties being served are as follows:
`
`Celine J. Crowson
`Joseph J. Raffetto
`Scott Hughes
`
`Helen Y. Trac
`
`
`
`celine.crowson@hoganlovells.com
`joseph.raffetto@hoganlovells.com
`scott.hughes@hoganlovells.com
`helen.trac@hoganlovells.com
`
`Respectfully submitted,
`
`
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`
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`____/ Robert Pistone /_________
`
`
`Date: January 20, 2023
`
`
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`
`
`11
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`
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