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
`U.S. Patent No. 10,965,512
`
`
`PETITIONER’S REPLY IN SUPPORT OF
`PETITIONER’S MOTION FOR JOINDER
`
`
`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
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`v.
`NEO WIRELESS, LLC,
`Patent Owner.
`
`
`Case IPR2023-00079
`U.S. Patent No. 10,965,512
`
`
`PETITIONER’S REPLY IN SUPPORT OF
`PETITIONER’S MOTION FOR JOINDER
`
`
`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
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Everlight Elecs. Co., Ltd. v. Document Sec. Sys., Inc.,
`No. IPR2018-01225 (P.T.A.B. Sept. 27, 2018) .................................................... 3
`Mercedes-Benz Grp. AG v. Arigna Tech. Ltd.,
`No. IPR2022-00776 (P.T.A.B. Sept. 8, 2022) ...................................................... 2
`Microsoft Corp. v. Koninklijke Philips N.V.,
`No. IPR2017-01754 (P.T.A.B. Nov. 29, 2017) .................................................... 3
`Pfizer Inc. v. Sanofi-Aventis Deutschland GmbH,
`No. IPR2019-00981 (P.T.A.B. Aug. 15, 2019) .................................................... 3
`Qualcomm Inc. v. DSS Tech. Mgmt., Inc.,
`No. IPR2016-01314 (P.T.A.B. Aug. 29, 2016) .................................................... 3
`Statutes
`35 U.S.C. § 315(c) ..................................................................................................... 1
`Rules
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`i
`
`
`
`Neo Wireless, LLC (“Patent Owner”) filed a Patent Owner’s Response to
`
`Petitioner’s Motion For Joinder,1 in which it does not oppose but instead seeks
`
`multiple unnecessary conditions on such joinder. Paper 7 (“Response”). Instead of a
`
`substantive opposition, Patent Owner argues that joinder should only be granted on
`
`the following conditions: 1) Petitioner should be denied any right to participate in
`
`the joined proceeding, 2) Petitioner’s exhibits, including its expert declaration,
`
`should be excluded from the record, and 3) if joinder is granted, Volkswagen should
`
`be shown to have accepted Petitioner’s role in the proceeding. For the reasons given
`
`herein and in Petitioner’s Motion for Joinder, Paper 3 (“Motion”), if the Volkswagen
`
`IPR is instituted, Petitioner’s Motion for Joinder should be granted, without
`
`imposing Patent’s Owner’s unnecessary conditions.
`
`First, the Response fails to appropriately consider Petitioner’s express
`
`statements that it, if joined, would take an inactive understudy role. Petitioner
`
`
`1 Petitioner respectively moved pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §
`
`42.122(b) for joinder with any inter partes review that is instituted as to U.S. Patent
`
`No. 10,965,512 (the “’512 patent”) in Volkswagen Group of America, Inc. v. Neo
`
`Wireless, LLC, No. IPR2022-01539 (the “Volkswagen IPR”). Should the
`
`Volkswagen IPR not be instituted, Petitioner’s motion for joinder would be moot
`
`and its petition decided on its merits.
`
`1
`
`
`
`being joined as an inactive understudy would not present any additional burden on
`
`the Patent Owner. As described in Petitioner’s Motion, the grounds presented here
`
`by Petitioner are the same as the grounds presented in the Volkswagen IPR,
`
`Motion at 6–7, and Petitioner will have no substantive role in that proceeding
`
`unless the petitioner in the Volkswagen IPR ceases its own participation. See
`
`Motion at 78.
`
`Second, Patent Owner’s supposed “further conditions,” Response at 2–7, are
`
`essentially duplicative of the restrictions that Petitioner already proposes on its
`
`participation in the Volkswagen IPR and are thus unnecessary. Petitioner’s Motion
`
`makes clear that, if joined, 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. These restrictions are adequate to eliminate the chance of
`
`duplicative briefing and any additional burden in the Volkswagen IPR. See, e.g.,
`
`Mercedes-Benz Grp. AG v. Arigna Tech. Ltd., No. IPR2022-00776, Paper No. 8, 11
`
`(P.T.A.B. Sept. 8, 2022).
`
`And although Patent Owner urges that Petitioner be compelled to withdraw
`
`the declaration of Mr. McNeal, that would be inappropriate and premature at this
`
`stage. The cases relied upon by Patent Owner involve situations where joining
`
`petitioners sought to introduce expert declarations with new or additional arguments
`
`or otherwise did not agree to rely solely on the declaration of first petitioner’s expert,
`
`2
`
`
`
`and are inapplicable here. Response at 7. The Board regularly permits joinder of
`
`petitioners who relied on different declarants, when, as is the case here, the joining
`
`petitioner’s expert presents the same opinions as the earlier-filed IPR. See, e.g.,
`
`Everlight Elecs. Co., Ltd. v. Document Sec. Sys., Inc., No. IPR2018-01225, Paper
`
`14, at 5-9 (P.T.A.B. Sept. 27, 2018); see also Pfizer Inc. v. Sanofi-Aventis
`
`Deutschland GmbH, No. IPR2019-00981, Paper 12, at 4 (P.T.A.B. Aug. 15, 2019);
`
`Microsoft Corp. v. Koninklijke Philips N.V., No. IPR2017-01754, Paper 16, at 6
`
`(P.T.A.B. Nov. 29, 2017); Qualcomm Inc. v. DSS Tech. Mgmt., Inc., No. IPR2016-
`
`01314, Paper 8, at 2 n.1, 3 (P.T.A.B. Aug. 29, 2016). Consistent with such cases,
`
`Petitioner agrees to rely entirely on, and be bound by, the declaration and deposition
`
`of Dr. Paul Min in the Volkswagen IPR, assuming that the Volkswagen IPR
`
`petitioner does not terminate its IPR before Dr. Min is deposed. See Everlight Elecs.,
`
`No. IPR2018-01225, Paper 14, at 6. And if the Volkswagen Petitioner terminates its
`
`IPR before Dr. Min is deposed, Petitioner will rely on Mr. McNeal’s substantively
`
`identical declaration and the Patent Owner can depose Mr. McNeal. Joinder
`
`accordingly presents no risk of duplicative declarations, depositions, or other
`
`evidence.
`
`Third, Patent Owner’s demands for agreement as to Petitioner’s role from the
`
`petitioner in the Volkswagen IPR are a red herring. Petitioner’s acceptance of an
`
`understudy role places numerous restrictions on Petitioner that the Volkswagen IPR
`
`3
`
`
`
`petitioner need not agree to, such as Petitioner being prohibited from raising grounds
`
`or introducing discovery not raised or introduced by the Volkswagen IPR petitioner
`
`and being bound by any discovery agreements between Patent Owner and the
`
`Volkswagen IPR petitioner. See Motion at 7–8. Should the Volkswagen IPR be
`
`instituted, and this proceeding joined with it, Petitioner is willing to meet and confer
`
`with the Board and all involved parties regarding the conduct of the joined
`
`proceeding, if necessary.
`
`*
`
`*
`
`*
`
`For the foregoing reasons, and the reasons provided in Petitioner’s Motion,
`
`Petitioner respectfully requests inter partes review of U.S. Patent No. 10,965,512
`
`and joinder with Volkswagen Group of America, Inc. v. Neo Wireless, LLC, No.
`
`IPR2021-01539 if it is instituted.
`
`Dated: March 20, 2023
`
`Respectfully submitted,
`
`/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
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and
`
`37 C.F.R. § 42.105, on March 20, 2023, a copy of the foregoing PETITIONER’S
`
`REPLY IN SUPPORT OF PETITIONER’S MOTION FOR JOINDER was served
`
`via e-mail (as agreed in Patent Owner’s Mandatory Notices) on the following
`
`counsel of record:
`
`Kenneth J. Weatherwax, weatherwax@lowensteinweatherwax.com
`Nathan Lowenstein, lowenstein@lowensteinweatherwax.com
`Edward Hsieh, hsieh@lowensteinweatherwax.com
`Parham Hendifar, hendifar@lowensteinweatherwax.com
`Hamad M. Hamad, hhamad@caldwellcc.com
`Nick Yakoobian, yakoobian@lowensteinweatherwax.com
`
`Service Email: NeoWireless_IPRs@lowensteinweatherwax.com
`
`
`
`
`
`
`
`
`/s/Nicole S. Lynch
`Nicole S. Lynch
`
`
`
`
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