IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LEDVANCE LLC, GENERAL ELECTRIC
`COMPANY, CONSUMER LIGHTING (U.S.),
`LLC d/b/a GE LIGHTING, CURRENT
`LIGHTING SOLUTIONS, LLC, OSRAM
`SYLVANIA, INC.
`Petitioner,
`v.
`CAO LIGHTING, INC.
`Patent Owner
`
`U.S. Patent No. 6,465,961 C2
`Issue Date: October 15, 2002
`Title: Semiconductor Light Source
`Using A Heat Sink With A Plurality Of
`Panels
`Case No. IPR2023-00123
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LEDVANCE LLC, GENERAL ELECTRIC
`COMPANY, CONSUMER LIGHTING (U.S.),
`LLC d/b/a GE LIGHTING, CURRENT
`LIGHTING SOLUTIONS, LLC, OSRAM
`SYLVANIA, INC.
`Petitioner,
`v.
`CAO LIGHTING, INC.
`Patent Owner
`
`U.S. Patent No. 6,465,961 C2
`Issue Date: October 15, 2002
`Title: Semiconductor Light Source
`Using A Heat Sink With A Plurality Of
`Panels
`Case No. IPR2023-00123
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR No. 2023-00123
`
`TABLE OF CONTENTS
`STATEMENT OF RELIEF REQUESTED ...................................................... 1
`I.
`BACKGROUND ............................................................................................... 1
`II.
`III. LEGAL STANDARDS ..................................................................................... 2
`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED .......................... 4
`
`A.
`
`B.
`
`C.
`
`Joinder is Appropriate Because The Petition and Motion Are Timely ....... 5
`
`The Petition Does Not Present New Grounds ............................................. 5
`
`The Petition Will Not Impact the Schedule in the Cree IPR ...................... 6
`
`D. Briefing and Discovery Will be Simplified ................................................. 6
`
`Joinder Will Not Prejudice Patent Owner .................................................... 8
`E.
`V. CONCLUSION ............................................................................................... 10
`
`-i-
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Click-To-Call Techs., LP v. Ingenio, Inc., YellowPages.com, LLC,
`899 F.3d 1321 (Fed. Cir. 2018) ............................................................................ 4
`Dell Inc. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00385, Paper 17 (PTAB July 29, 2013) ............................................ 3, 5
`Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc.,
`IPR2014-00556, Paper 19 (PTAB July 9, 2014) .................................................. 5
`Facebook, Inc. v. Windy City Innov., LLC,
`973 F.3d 1321 (Fed. Cir. 2020) .................................................................... 3, 4, 9
`Global Foundries U.S. Inc. v. Godo Kaisha IP Bridge 1,
`IPR2017-00925 ..................................................................................................... 8
`Google LLC v. Express Mobile, Inc.,
`IPR2022-00597, Paper 17 (P.T.A.B. Aug. 19, 2022) ........................................... 9
`Hyundai Motor Co. v. Am. Vehicular Sciences LLC,
`IPR2014-01543, Paper No. 11 (Oct. 24, 2014) .................................................... 3
`Hyundai,
`IPR2014-01543, Paper 11 ..................................................................................... 5
`Intel Corp. v. VLSI Technology LLC,
`IPR2022-00479, Paper 13 (P.T.A.B. June 6, 2022) ............................... 3, 5, 9, 10
`Kingston Tech Co., Inc. v. Securewave Storage Solutions, Inc.,
`IPR2022-00139, Paper 12 (PTAB Mar. 23, 2020) ......................................passim
`Kyocera Corporation v. Softview LLC,
`IPR2013-00004, Paper 15 (April 24, 2013) ......................................................... 3
`Macronix Int’l Co. v. Spansion,
`IPR2014-00898, Paper 15 (Aug. 13, 2014) .......................................................... 3
`Mylan Pharms. Inc. v. Novartis AG,
`IPR2015- 00268 .................................................................................................... 7
`-ii-
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`
`Mylan Pharms.,
`IPR2019-01905, Paper 12 ..................................................................................... 7
`Nokia of Am. Corp. v. Oyster Optics, LLC,
`IPR2018-00984, Paper 9 (Jul. 27, 2018) ............................................................ 10
`Nokia of Am. Corp. v. TQ Delta, LLC,
`IPR2022-00847, Paper 1 (PTAB Mar. 4, 2022) ................................................... 1
`Nokia of America Corp. v. TQ Delta, LLC,
`IPR2022-00847 ..................................................................................................... 1
`Sony Corp. v. Memory Integrity, LLC.,
`IPR2015-01353, Paper No. 11 (Oct. 15, 2015) .................................................... 6
`Sony Mobile Commc’ns Ab v. Ancora Techs., Inc.,
`IPR2021-00663, Paper 17 (P.T.A.B. June 10, 2021) ........................................... 9
`TQ Delta, LLC v. CommScope Holding Company, Inc. et al.,
`Case No. 2-21-cv-00310 (E.D. Tex. Aug. 13, 2021) ............................................ 2
`TQ Delta, LLC v. Pace Americas, LLC et al.,
`Case No. 1-13-cv-01835 (D. Del. Nov. 4, 2013) .................................................. 2
`Statutes
`35 U.S.C. § 315(b) ........................................................................................... 4, 9, 10
`35 U.S.C. § 315(c) ............................................................................................. 2, 3, 4
`35 U.S.C. § 316(a)(11) ............................................................................................... 6
`Leahy-Smith America Invents Act ............................................................................ 2
`Other Authorities
`37 C.F.R. § 42.122(b) ................................................................................................ 4
`
`
`
`
`-iii-
`
`
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`STATEMENT OF RELIEF REQUESTED
`
`I.
`
`LEDVANCE LLC (“LEDVANCE”), General Electric Company, Consumer
`
`Lighting (U.S.), LLC d/b/a GE Lighting (“GE”), Current Lighting Solutions, LLC
`
`(“Current”), and OSRAM Sylvania, Inc. (“OSRAM”), (together “Petitioner”)
`
`respectfully requests joinder of the concurrently filed petition for Inter Partes review
`
`of U.S. Patent No. 6,465,961 C2 (“the ’961 patent”) (IPR2022-00847) with
`
`Wolfspeed, Inc. and Ideal Industries Lighting, LLC d/b/a Cree Lighting v. CAO
`
`Lighting, IPR2022-00847, filed April 8, 2022 and instituted October 19, 2022
`
`(hereinafter, the “Cree IPR”). See IPR2022-00847, Paper 10. The grounds in the
`
`instant Petition—and evidence upon which they rely—are identical to the grounds
`
`in the Cree IPR petition, which the Board instituted. Id.
`
`Further, if joined, Petitioner will assume a “silent understudy” role. Thus, the
`
`proposed joinder will not complicate or delay the Cree IPR in any manner, or
`
`prejudice the Patent Owner. Accordingly, Petitioner respectfully requests that the
`
`Board institute Petitioner’s IPR and grant this Motion for Joinder.
`
`
`
`II. BACKGROUND
`
`On April 8, 2022, Cree petitioned for IPR of the ’961 patent. Wolfspeed, Inc.
`
`and Ideal Industries Lighting, LLC d/b/a Cree Lighting v. CAO Lighting, Inc.,
`
`IPR2022-00847, Paper 1 (PTAB Apr. 8, 2022). On October 19, 2022, the Board
`
`instituted the Cree IPR.
`
`
`
`-1-
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`The instant Petition is the same as the Cree IPR: it involves the same patent,
`
`claims, grounds of unpatentability, and evidence. The instant Petition includes the
`
`expert declaration of Dr. Christian Wetzel (Ex. 1021, “Wetzel Decl.”), which is
`
`substantively identical to the declaration put forth in the Cree IPR.1
`
`Patent Owner asserted the ’961 Patent against GE and Current in CAO
`
`Lighting, Inc. v. General Elec. Co. et al. Case No. 20-681-GBW (D. Del. May 20,
`
`2020) and against OSRAM and LEDVANCE in CAO Lighting Inc. v. OSRAM
`
`Sylvania et al., Case No. 20-690-GBW (D. Del. May 22, 2020).
`
`
`
`III. LEGAL STANDARDS
`
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
`
`review (IPR) proceedings under 35 U.S.C. § 315(c), which states:
`
`
`1 The Petitioner’s Petition is supported by a declaration from Dr. Christian Wetzel
`
`(Ex.1021), who considered the declaration provided by Cree’s expert and the
`
`opinions set forth therein. Ex.1021, ¶23. Dr. Wetzel agrees with those opinions and
`
`adopts them as his own. Ex.1021, ¶23 Therefore, the declaration of Dr. Wetzel does
`
`not expand on the scope of expert opinions provided in the Cree IPR Proceeding.
`
`See Everlight Elecs. Co. v. Document Security Sys., Inc., IPR2018- 01260, Paper 12
`
`at 6-7 (PTAB Nov. 14, 2018) (granting motion for joinder where petitioner
`
`submitted separate but substantially identical expert declaration).
`
`
`
`-2-
`
`
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`(c) 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 partes review under section 314.
`
`“In deciding whether to join a party to an inter partes review, § 315(c)
`
`requires ‘two different decisions,’ first ‘whether the joinder applicant’s petition for
`
`IPR warrants institution under § 314,’ and then whether to ‘exercise… discretion
`
`to decide whether to join as a party the joinder applicant.’ See Facebook, Inc. v.
`
`Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). ‘The statute makes
`
`clear that the joinder decision is made after a determination that a petition warrants
`
`institution, thereby affecting the manner in which an IPR will proceed.’ Id. (citing
`
`Thryv v. Click-to-Call Techs., LP, 140 S. Ct. 1367, 1377 (2020)).” Intel Corp. v.
`
`VLSI Technology LLC, IPR2022-00479, Paper 13 at 4 (P.T.A.B. June 6, 2022).
`
`“A motion for joinder should: (1) set forth the reasons 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.” Kingston Tech., IPR2020-00139, Paper 12 at 6-7; see, e.g., Hyundai
`-3-
`
`
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`Motor Co. v. Am. Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct.
`
`24, 2014); Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13,
`
`2014); Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17
`
`(PTAB July 29, 2013); Kyocera Corporation v. Softview LLC, IPR2013-00004,
`
`Paper 15 at 4 (April 24, 2013)).
`
`Under 35 U.S.C. § 315(b), entities who would otherwise be time-barred may
`
`file IPR petitions with accompanying motions for joinder pursuant to § 315(c).
`
`Indeed, the Federal Circuit has recognized that Ҥ 315(b) includes a specific
`
`exception to the time bar.” Facebook, Inc. v. Windy City Innovations, LLC, , 973
`
`F.3d 1321, 1333 (Fed. Cir. March 18, 2020) (quoting 35 U.S.C. § 315(b))
`
`(emphasis added). “Congress… demonstrated that it knew how to provide an
`
`exception to the time bar by including a second sentence in the provision: ‘The
`
`time limitation set forth in the preceding sentence shall not apply to a request for
`
`joinder under subsection (c).’” Click-To-Call Techs., LP v. Ingenio, Inc.,
`
`YellowPages.com, LLC, 899 F.3d 1321, 1331 (Fed. Cir. 2018) (quoting 35 U.S.C.
`
`§ 315(b)).
`
`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`In view of the applicable law, the Board should exercise its discretion to grant
`
`joinder and institute Petitioner’s copycat IPR on the ’961 Patent joining it to the Cree
`
`IPR for the reasons set forth below under the Kingston framework.
`
`
`
`-4-
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`Joinder is Appropriate Because the Petition and Motion
`Are Timely
`The Motion for Joinder and accompanying Petition are timely because they
`
`A.
`
`are filed less than one month after the October 19, 2022 decision instituting trial in
`
`the Cree IPR. 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed... no
`
`later than one month after the institution date of any inter partes review for which
`
`joinder is requested.”); see, e.g., Kingston Tech. Co. v. Securewave Storage
`
`Solutions, Inc., IPR2020-00139, Paper 12 at 6-7 (PTAB Mar. 23, 2020) (holding
`
`that “me-too” petition was timely where it was filed more than one year after
`
`petitioner was sued for infringement but within one month of the institution of the
`
`IPR which petitioner sought to join); Intel, IPR2022-00479, Paper 13 at 17
`
`(“Petitioner’s timeliness in filing the Petition and requesting joinder minimized the
`
`potential disruption to an existing proceeding if joinder is granted… those aspects
`
`of Petitioner’s approach support granting joinder.”).
`
`
`
`B.
`
`The Petition Does Not Present New Grounds
`
`Petitioner’s Petition does not raise any new grounds of unpatentability and
`
`does “not present issues that might complicate or delay” the Cree IPR.
`
` See
`
`Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc., IPR2014-00556, Paper
`
`19 (PTAB July 9, 2014). Petitioner’s Petition challenges the same claims of the
`
`‘961 Patent using the same arguments, analysis, evidence, and grounds of
`
`unpatentability as the Cree IPR. See, e.g., Kingston Tech., IPR2020-00139, Paper
`
`
`
`-5-
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`12 at 6-9; Hyundai, IPR2014-01543, Paper 11 at 2-4; Dell, IPR2013-00385, Paper
`
`17, at 6-10.
`
`C.
`
`The Petition Will Not Impact the Schedule in the
`Cree IPR
`
`Because Petitioner’s Petition raises no new grounds of unpatentability, and
`
`
`
`because a Scheduling Order has been established for the Cree IPR, joinder will have
`
`no impact on the schedule of the Cree IPR. See Sony Corp. v. Memory Integrity,
`
`LLC., IPR2015-01353, Paper No. 11 at 6 (Oct. 15, 2015) (granting IPR and motion
`
`for joinder where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR]”).
`
`Petitioner will adhere to all applicable deadlines set in the Scheduling Order for the
`
`Cree IPR and, as detailed below, will assume an understudy role in the proceeding.
`
`As discussed further below, Petitioner will limit its participation in this
`
`proceeding to that of a “silent understudy.”
`
`Accordingly, joinder of Petitioner to the Cree IPR will not affect the Board’s
`
`ability to complete its review and final decision within the statutory time limits
`
`under 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
`
`
`
`D.
`
`Briefing and Discovery Will be Simplified
`
`As a “silent understudy,” Petitioner agree that, if joined, the following
`
`conditions will apply:
`
`a)
`
`all filings by Petitioner in the joined proceeding will be consolidated
`-6-
`
`
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`with the filings of Cree, unless a filing solely concerns issues that do not
`
`involve Cree;2
`
`b)
`
`Petitioner shall not be permitted to raise any new grounds not
`
`instituted by the Board in the Cree IPR, or introduce any argument or
`
`discovery not already introduced by Cree;
`
`c)
`
`Petitioner shall be bound by any agreement between the Patent
`
`Owner and Cree concerning discovery and/or depositions; and
`
`d)
`
`Petitioner at deposition shall not receive any direct, cross examination
`
`or redirect time beyond that permitted for Cree in this proceeding alone under
`
`either 37 C.F.R. § 42.53 or any agreement between the Patent Owner and
`
`Cree.
`
`See Mylan Pharms., IPR2019-01905, Paper 12 at 8-9 (granting motion for joinder
`
`subject to identical conditions); Mylan Pharms. Inc. v. Novartis AG, IPR2015-
`
`00268, Paper 17 at 5-6 (PTAB Apr. 10, 2015) (finding the same proposed
`
`limitations “are consistent with the ‘understudy’ role that Petitioner agrees to
`
`assume, as well as Petitioner’s assertion that its presence would not require
`
`introducing any additional arguments, briefing or discovery.”). Petitioner will also
`
`
`2 If a filing is necessary concerning an issue that does not involve Cree, Petitioner
`
`will seek authorization from the PTAB before filing any such paper.
`
`
`
`-7-
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`abide by any additional conditions the Board deems appropriate.
`
`
`
`E.
`
`Joinder Will Not Prejudice Patent Owner
`
`Joinder of Petitioner to the Cree IPR will not prejudice Patent Owner. Patent
`
`Owner need not expend any additional resources above and beyond those required
`
`in the current Cree IPR. Indeed, it is hard to imagine how the Patent Owner could
`
`be prejudiced by Petitioner’s joinder, as the PTO anticipated that joinder would be
`
`granted as a matter of right in circumstances like those here. See Kingston Tech.,
`
`IPR2020-00139, Paper 12 at 14 (quoting 157 CONG. REC. S1376 (daily ed. Mar. 8,
`
`2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be allowed
`
`as of right – if an inter partes review is instituted on the basis of a petition, for
`
`example, a party that files an identical petition will be joined to that proceeding,
`
`and thus allowed to file its own briefs and make its own arguments.”) (emphases
`
`in opinion)).
`
`Further, any argument that joinder may somehow frustrate settlement
`
`between Cree and Patent Owner would not be a basis to deny joinder, because that
`
`same possibility exists in every joinder situation. Global Foundries U.S. Inc. v.
`
`Godo Kaisha IP Bridge 1, IPR2017-00925 and IPR2017-00926, Paper 13 at 10
`
`(June 9, 2017).
`
`Patent Owner may argue that Petitioner’s petition should be denied because
`
`Petitioner is statutorily time-barred from seeking inter partes review. However,
`
`
`
`-8-
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`the one-year time limitation does not apply to a request for joinder. See 35 U.S.C.
`
`§ 315(b); Intel Corp. v. VLSI Technology LLC, IPR2022-00479, Paper 13 at 7 n.7
`
`(P.T.A.B. June 6, 2022). This argument should thus be rejected—as it has been in
`
`numerous similar IPRs—as it is inconsistent with the language of 35 U.S.C. §
`
`315(b). Facebook, Inc., 973 F.3d at 1333.
`
`Indeed, the Board has instituted IPRs granting motions for joinder in similar
`
`proceedings where parties that were time-barred from filing their own petitions
`
`were permitted to pursue copycat IPR petitions. In Kingston Tech Co., Inc. v.
`
`Securewave Storage Solutions, Inc., IPR2022-00139, Paper 12 (PTAB Mar. 23,
`
`2020), the Board exercised its discretion to grant joinder where: 1) the copycat
`
`petition was filed within one month after institution of the original petition; and 2)
`
`the copycat petition did not add any new issues to the original IPR. Id. at 7. The
`
`Board held that the time bar did not apply to the Kingston petition and rejected
`
`Patent Owner’s time-bar based arguments.
`
`Specifically, the Board has instituted IPRs and granted motions for joinder
`
`in cases where parties who were otherwise time-barred filed copycat petitions to
`
`petitions filed by defendants in related litigation. See Google LLC v. Express
`
`Mobile, Inc., IPR2022-00597, Paper 17 (P.T.A.B. Aug. 19, 2022); Sony Mobile
`
`Commc’ns Ab v. Ancora Techs., Inc., IPR2021-00663, Paper 17 (P.T.A.B. June 10,
`
`2021); see also Intel, IPR2022-00479, Paper 13 at 18 (rejecting Patent Owner’s
`
`
`
`-9-
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`argument that joinder of otherwise time-barred parties would “effectively
`
`circumvent the time limitation in § 315(b),” because the statute provides for an
`
`exception to the time bar for joinder, and rejecting Patent Owner’s argument that
`
`the Board should grant motions for joinder “only in limited circumstances,”
`
`because neither same-party joinder nor new issues were involved in the copycat
`
`petition);3 Nokia of Am. Corp. v. Oyster Optics, LLC, IPR2018-00984, Paper 9 at
`
`6 (Jul. 27, 2018) (instituting petition filed by a time barred entity and determining
`
`that joinder would not unduly prejudice the patent owner). Critically, the Board
`
`“views substantive consideration of the merits of a petition as an important factor
`
`in maintaining the balance between improving patent quality and the potential for
`
`abuse. To determine otherwise would prioritize insulating patent owners from
`
`potential abuse without also addressing the public benefit to improving patent
`
`quality.” Intel, IPR2022-00479, Paper 13 at 11. Here too, the Board should reject
`
`Patent Owner’s arguments, consider Petitioner’s IPR on the merits, institute trial,
`
`and grant its motion for joinder.
`
`V. CONCLUSION
`
`
`
`
`3 Unlike in Intel, in the instant case there are no questions regarding the relationship
`
`between the entities at issue and the grounds in this petition and the Cree IPR are the
`
`same.
`
`
`
`-10-
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`For the foregoing reasons, Petitioner respectfully request that its Petition for
`
`inter partes review of the ’961 Patent be granted and that the proceedings be
`
`joined with IPR2022-00847.
`
`Date: October 31, 2022
`
`Respectfully submitted,
`
`/ Sanjeet K. Dutta /
`Sanjeet K. Dutta (Reg. No. 46,145)
`GOODWIN PROCTER LLP
`601 Marshall Street
`Redwood City, California 94063
`Email: sdutta@goodwinlaw.com
`Tel.: +1 (650) 752-3100
`Fax: +1 (650) 853-1038
`
`Lead Counsel for Petitioner
`
`-11-
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`Pursuant to 37 C.F.R. §§ 42.6(e), 42.8(b)(4), and 42.105, the undersigned
`
`certifies that on October 31, 2022, a complete copy of the foregoing Motion was
`
`served via Federal Express Next Business Day Delivery to the Patent Owner by
`
`serving the correspondence address of record for the ‘961 patent:
`
`CAO Group, Inc.
`Attn: Legal Department
`4628 W. Skyhawk Dr.
`West Jordan, UT 84084-4501
`
`Courtesy copies of the foregoing documents were served by e-mail on the
`
`
`
`following counsel of record for Patent Owner in the Underlying Litigation:
`
`BARNES & THORNBURG LLP
`John M. Moye, jmoye@btlaw.com
`Todd G. Vare, todd.vare@btlaw.com
`Paul B. Hunt, paul.hunt@btlaw.com
`Ronald E. Cahill, rcahill@btlaw.com
`Heather B. Repicky, heather.repicky@btlaw.com
`Jeffrey C. Morgan, jeff.morgan@btlaw.com
`
`Courtesy copies of the foregoing document were also served by email upon
`
`counsel of record for CAO Lighting Inc., the Patent Owner in IPR2022-00847 at the
`
`following address:
`
`
`
`
`
`
`
`
`
`Joshua Larsen (Reg No. 62,761)
`Joshua.Larsen@btlaw.com
`Paul Hunt (Reg No. 37,154)
`Paul.Hunt@btlaw.com
`BARNES & THORNBURG LLP
`11 South Meridian Street
`Indianapolis, IN 46204
`
`
`
`-12-
`
`
`
`
`
`
`
`
`U.S. Patent No. 6,465,961 C2
`IPR2023-00123
`
`
`
`
`
`
`
`
`
`Adam Kaufmann (Reg No. 66,276)
`Adam.Kaufmann@btlaw.com
`BARNES & THORNBURG LLP
`One North Wacker Drive, Suite 4400
`Chicago, IL 60606
`
`Courtesy copies were also served by email upon counsel of record for
`
`Petitioner in IPR2022-00847 at the following address:
`
`
`
`
`
`
`
`
`
`John C. Alemmani (Reg No. 47,384)
`jalemanni@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: October 31, 2022
`
`
`
`
`
`
`
`
`
`Matias Ferrario (Reg No. 51,082)
`mferrario@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`CreeCAOIPRS@kilpatricktowsend.com
`
`Respectfully submitted,
`
`/Sanjeet K. Dutta/
`Sanjeet K. Dutta (Reg. No. 46,145)
`GOODWIN PROCTER LLP
`601 Marshall Street
`Redwood City, CA 94063
`Email: sdutta@goodwinlaw.com
`Tel: +1 (650) 752-3100
`Fax: +1 (650) 853-1038
`Lead Counsel for Petitioner
`
`
`
`
`-13-
`
`
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
