UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GARMIN INTERNATIONAL, INC., GARMIN USA, INC.,
`AND GARMIN LTD.,
`Petitioner
`
`v.
`
`AIRE TECHNOLOGY LIMITED,
`Patent Owner
`
`
`
`Case No. IPR2023-00188
`U.S. Patent No. 8,581,706
`
`
`
`MOTION FOR JOINDER TO
`INTER PARTES REVIEW IPR2022-01137
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GARMIN INTERNATIONAL, INC., GARMIN USA, INC.,
`AND GARMIN LTD.,
`Petitioner
`
`v.
`
`AIRE TECHNOLOGY LIMITED,
`Patent Owner
`
`
`
`Case No. IPR2023-00188
`U.S. Patent No. 8,581,706
`
`
`
`MOTION FOR JOINDER TO
`INTER PARTES REVIEW IPR2022-01137
`
`
`
`
`
`
`
`
`
`
`Garmin’s Motion for Joinder
`to IPR2022-01137
`
`TABLE OF CONTENTS
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ......................... 1
`
`II.
`
`STATEMENT OF MATERIAL FACTS ....................................................... 2
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ....................... 3
`
`A.
`
`Legal Standard ...................................................................................... 3
`
`B.
`
`Each of the Factors Weighs in Favor of the Board Granting the Motion
`for Joinder ............................................................................................. 3
`
`1.
`
`2.
`
`3.
`
`4.
`
`Joinder with the Apple IPR Is Appropriate ............................... 4
`
`Petitioner Does Not Propose New Grounds of Unpatentability 5
`
`Joinder will Not Negatively Impact the Apple IPR Trial Schedule
` .................................................................................................... 5
`
`Petitioner Agrees to Adhere to Procedures to Simplify Briefing
`and Discovery ............................................................................ 6
`
`IV. CONCLUSION ............................................................................................... 8
`
`
`
`
`
`
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Apple Inc. v. Aire Technology Limited,
`IPR2022-01137 ..................................................................................................... 1
`
`Dell, Inc. v. Network-1 Security Sols., Inc.,
`IPR2013-00385, Paper 17 (PTAB July 29, 2013) ................................................ 3
`
`Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ............................................... 3
`
`Noven Pharm, Inc. v. Novartis AG,
`IPR2014-00550, Paper No. 38 (Apr. 10, 2015) .................................................... 7
`
`Par Pharm., Inc., v. Novartis AG,
`IPR2016-01023, Paper 20 (Oct. 27, 2016) ........................................................... 5
`
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper 12 (Aug. 24, 2016) .......................................................... 4
`
`Sony Corp., et al. v. Memory Integrity,
`LLC, IPR2015-01353, Paper 11 (Oct. 5, 2015) ............................................ 3, 5, 7
`
`Statutes
`
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`
`Other Authorities
`
`37 C.F.R. § 42.1(b) ................................................................................................ 1, 4
`
`37 C.F.R. § 42.22 ....................................................................................................... 1
`
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`37 C.F.R. § 42.53 ....................................................................................................... 7
`
`U.S. Patent No. 8,581,706 ...................................................................................... 1, 2
`
`
`
`
`
`
`
`
`Garmin’s Motion for Joinder
`to IPR2022-01137
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd. (“Petitioner”
`
`or “Garmin”) respectfully submits this Motion for Joinder concurrently with a
`
`Petition (“the Garmin petition”) for inter partes review of U.S. Patent No. 8,581,706
`
`(“the ‘706 patent”).
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Garmin
`
`requests institution of the concurrently filed Petition for inter partes review and
`
`joinder with Apple Inc. v. Aire Technology Limited, IPR2022-01137 (“the Apple
`
`IPR” or “the Apple proceeding”), which Apple filed on June 15, 2022 and concerns
`
`the same claims 1-3, 11-12, 16, 18 and 20 of the ‘706 patent. No institution decision
`
`has been issued yet in the Apple IPR. This request is being submitted within the
`
`time set forth in 37 C.F.R. § 42.122(b).
`
`Garmin submits that the request for joinder is consistent with the policy
`
`surrounding inter partes reviews, as it is the most expedient way “to secure the just,
`
`speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b).
`
`The Garmin petition and the Apple IPR are substantively identical; they contain the
`
`same grounds (based on the same prior-art combinations and supporting evidence)
`
`against the same claims. Further, upon joining the Apple proceeding, Garmin will
`
`act as an “understudy” and will not assume an active role unless the current petitioner
`
`ceases to participate in the IPR. Accordingly, the proposed joinder will neither
`
`
`
`1
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`
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`Garmin’s Motion for Joinder
`to IPR2022-01137
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`unduly complicate the Apple IPR nor delay its schedule. As such, the joinder will
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`promote judicial efficiency in determining the patentability of the ‘706 patent
`
`without prejudice to Patent Owner. Apple does not oppose this motion for joinder.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`The ‘706 patent is or was at issue in the following patent infringement
`
`actions: Case Nos. 6:21-cv-00955 (W.D. Tex.); 6:21-cv-01101 (W.D. Tex.); 6:21-
`
`cv-01104 (W.D. Tex.); and 8:22-cv-01027 (C.D. Cal.).
`
`2.
`
`The ‘706 patent is at issue in two other IPR proceedings: Case Nos.
`
`IPR2022-01137 (the Apple IPR) and IPR2022-00876.
`
`3.
`
`On May 2, 2022, Samsung Electronics Co., Ltd. filed a petition for inter
`
`partes review (IPR2022-00876) (“the Samsung IPR”), requesting cancellation of
`
`claims 1-6, 9-12, and 14-22 of the ‘706 patent. On June 15, 2022, Apple Inc. filed a
`
`petition for inter partes review (IPR2022-01137), requesting cancellation of claims
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`1-3, 11-12, 16, 18 and 20 of the ‘706 patent. On October 6, 2022, Patent Owner Aire
`
`Technology Limited (“Patent Owner”) filed a Patent Owner Preliminary Response
`
`in the Apple IPR. On October 18, 2022 the Board granted a joint motion to terminate
`
`the Samsung IPR based on settlement.
`
`4.
`
`The Garmin petition and the Apple petition are substantially identical
`
`as they contain the same grounds (based on the same prior-art combinations and
`
`same supporting evidence) against the same claims.
`
`
`
`2
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`
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`Garmin’s Motion for Joinder
`to IPR2022-01137
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
`
`inter partes review petition with another inter partes review proceeding. The Board,
`
`in determining whether to exercise its discretion to grant joinder, considers (1) “why
`
`joinder is appropriate”; (2) “whether a new ground of unpatentability is raised in the
`
`second petition”; (3) “how the cost and schedule of the first proceeding will be
`
`impacted if joinder is granted”; and (4) “whether granting joinder will add to the
`
`complexity of the briefing and/or discovery.” Consolidated Trial Practice Guide 76
`
`(Nov. 2019); see, e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at
`
`4 (PTAB Apr. 24, 2013); Dell, Inc. v. Network-1 Security Sols., Inc., IPR2013-
`
`00385, Paper 17 at 3 (PTAB July 29, 2013).
`
`B.
`
`Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder
`
`All four factors weigh in favor of granting Garmin’s motion for joinder. The
`
`Garmin petition is substantively identical to the petition in the Apple IPR. Garmin
`
`does not present any new grounds of unpatentability. Additionally, as all issues are
`
`substantively identical and Garmin will act as an “understudy,” joinder will have
`
`minimal or no impact on the pending schedule of the Apple IPR. See Sony Corp., et
`
`al. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 at 6 (Oct. 5, 2015) (granting
`
`motion for joinder where petitioners requested an “understudy” role). Moreover, the
`
`
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`3
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`
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`Garmin’s Motion for Joinder
`to IPR2022-01137
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`briefing and discovery will be simplified by resolving all issues in a single
`
`proceeding. Accordingly, joinder is appropriate.
`
`1.
`
`Joinder with the Apple IPR Is Appropriate
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper 12
`
`at 9 (Aug. 24, 2016) (internal citations omitted). Here joinder with the Apple IPR is
`
`appropriate because the Garmin petition introduces identical arguments and the same
`
`grounds raised in the existing Apple proceeding (i.e., it challenges the same claims
`
`of the same patent, relies on the same expert declaration, and is based on the same
`
`grounds and combinations of prior art submitted in the Apple petition). Other than
`
`minor differences, such as differences related to formalities of a different party filing
`
`the petition and an analysis of Fintiv factors, there are no changes to the facts,
`
`citations, evidence, or arguments introduced in the Garmin petition. Because these
`
`proceedings are substantively identical, good cause exists for joining this proceeding
`
`with the Apple IPR so that the Board, consistent with 37 C.F.R. § 42.1(b), can
`
`efficiently “secure the just, speedy, and inexpensive resolution” of the Garmin and
`
`Apple petitions in a single proceeding.
`
`
`
`4
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`
`
`Garmin’s Motion for Joinder
`to IPR2022-01137
`
`2.
`
`Petitioner Does Not Propose New Grounds
`Unpatentability
`
`of
`
`The Garmin petition is substantively identical to the petition in the Apple IPR
`
`(i.e., challenging the same claims of the same patent, relying on the same expert
`
`declaration, and on the same grounds and combinations of prior art submitted in the
`
`Apple petition). See Sony, IPR2015-01353, Paper 11 at 5-6 (Oct. 5, 2015) (granting
`
`institution of IPR and motion for joinder where petitions relied “on the same prior
`
`art, same arguments, and same evidence, including the same expert and a
`
`substantively identical declaration”); see also Par Pharm., Inc., v. Novartis AG,
`
`IPR2016-01023, Paper 20 at 14 (Oct. 27, 2016) (granting motion for joinder where
`
`petitioners “do not assert any new ground of unpatentability that is not already being
`
`considered in [an instituted IPR proceeding], relying on the same arguments and
`
`evidence, and do not require any modification to the existing schedule”).
`
`3.
`
`Joinder will Not Negatively Impact the Apple IPR Trial
`Schedule
`
`Joinder will have minimal impact, if any, on the Apple IPR trial schedule
`
`because the Garmin petition presents no new issues or grounds of unpatentability.
`
`See Sony Corp., IPR2015-01353, Paper 11 at 6 (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]”). Further,
`
`Petitioner explicitly consents to the same trial schedule in the Apple IPR. There are
`
`
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`5
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`
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`Garmin’s Motion for Joinder
`to IPR2022-01137
`
`no new issues for the Board to address, and Patent Owner will not be required to
`
`present any additional responses or arguments.
`
`Patent Owner’s Response will also not be negatively impacted because the
`
`issues presented in the Garmin petition are identical to the issues presented in the
`
`Apple petition. Patent Owner will not be required to provide any additional analysis
`
`or arguments beyond what it will already provide in responding to the petition in the
`
`Apple IPR. Also, because the Garmin petition relies on the same expert and the same
`
`declaration, only a single deposition is needed for the proposed joined proceeding.
`
`Accordingly, joinder with the Apple IPR does not unduly burden or negatively
`
`impact the trial schedule.
`
`4.
`
`Petitioner Agrees to Adhere to Procedures to Simplify
`Briefing and Discovery
`
`Garmin explicitly agrees to take an “understudy” role, which will simplify
`
`briefing and discovery. Specifically, Garmin explicitly agrees, upon joining the
`
`Apple proceeding, that the following conditions, as previously approved by the
`
`Board in similar circumstances, shall apply so long as the current petitioner in
`
`IPR2022-01137 remains an active party:
`
`a.
`
`all filings by Garmin in the joined proceedings will be consolidated
`
`with the filings of the current petitioner, unless a filing concerns issues
`
`solely involving Garmin;
`
`
`
`6
`
`
`
`Garmin’s Motion for Joinder
`to IPR2022-01137
`
`b.
`
`Garmin shall not be permitted to raise any new grounds not instituted
`
`by the Board in the Apple IPR, or introduce any argument or discovery
`
`not already introduced by the current petitioner;
`
`c.
`
`Garmin shall be bound by any agreement between Patent Owner and
`
`the current petitioner concerning discovery and/or depositions; and
`
`d.
`
`at deposition, Garmin shall not receive any direct, cross examination,
`
`or redirect time beyond that permitted under 37 C.F.R. § 42.53 or any
`
`agreement between Patent Owner and the current petitioner.
`
`See Noven Pharm, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at 5 (Apr. 10,
`
`2015). Unless and until the current petitioner ceases to participate in the instituted
`
`IPR proceeding, Garmin will not assume an active role therein.
`
`Thus, by Garmin accepting an “understudy” role, Patent Owner and the
`
`current petitioner can comply with the existing trial schedule without needing any
`
`duplicative efforts by the Board or Patent Owner. These steps will minimize any
`
`potential complications or delay that potentially may result by joinder. See Sony
`
`Corp., IPR2015-01353, Paper 11 at 6-7 (granting IPR and motion for joinder
`
`because “joinder would increase efficiency by eliminating duplicative filings and
`
`discovery, and would reduce costs and burdens on the parties as well as the Board”
`
`
`
`7
`
`
`
`where petitioners agreed to an “understudy” role). Garmin is further willing to agree
`
`Garmin’s Motion for Joinder
`to IPR2022-01137
`
`to any other reasonable conditions the Board deems necessary.1
`
`IV. CONCLUSION
`
`Based on the factors discussed above, Garmin respectfully requests that the
`
`Board grant the Garmin petition and grant joinder with the Apple IPR.
`
`Date: November 10, 2022
`
`Respectfully submitted,
`
`SHOOK HARDY AND BACON
`
`
`
`
`
`By: /Ryan Schletzbaum/
`Ryan Schletzbaum
`Reg. No. 70,850
`2555 Grand Boulevard
`Kansas City, MO 64108
`(816) 474-6550
`(816) 421-5547 Facsimile
`rschletzbaum@shb.com
`
`Counsel for Petitioner Garmin
`International Inc., Garmin USA, Inc.,
`and Garmin Ltd.
`
`
`1 Garmin further notes that a joinder petition in these circumstances is not the type
`of serial petition to which a General Plastic analysis applies as there is no strategic
`advantage to be gained by filing this additional petition, and there are no concerns
`of “road mapping” the Patent Owner’s strategy because Petitioner has submitted a
`petition that is substantively identical to Apple’s petition. See AT&T Services, Inc.
`v. Broadband iTV, Inc., TPR2021-00649, Paper 12 at 7-17 (August 25, 2021)
`(instituting IPR on a “me-too” petition despite being filed after the PTAB’s
`institution decision on the primary petition.).
`
`
`
`8
`
`
`
`Garmin’s Motion for Joinder
`to IPR2022-01137
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the Motion for
`
`Joinder has been served on the Patent Owner via Federal Express or by means
`
`at least as fast and reliable as Federal Express on November 10, 2022, at the
`
`following address:
`
`Bacon & Thomas, PLLC
`201 N. Union St.
`Suite 320
`Alexandria, VA 22314-2649
`
`Further, a courtesy copy of this Motion for Joinder was sent via e-mail to
`
`Patent Owner’s litigation counsel:
`
`Brett E. Cooper
`bcooper@raklaw.com
`Marc A. Fenster
`mfenster@raklaw.com
`Seth Hasenour
`shasenour@raklaw.com
`Drew B. Hollander
`dhollander@raklaw.com
`Reza Mirzaie
`rmirzaie@raklaw.com
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`
`Finally, Petitioner has sent an e-mail to the Board and parties listed in
`
`IPR2022-01137 notifying of the filing of the Motion for Joinder and Petition for
`
`Inter Partes Review as follows:
`
`Scott T. Jarratt
`scott.jarratt.ipr@haynesboone.com
`
`
`
`9
`
`
`
`Garmin’s Motion for Joinder
`to IPR2022-01137
`
`Andrew S Ehmke
`andy.ehmke.ipr@haynesboone.com
`Calmann J. Clements
`calmann.clements.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Brett Cooper
`bcooper@bc-lawgroup.com
`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`
`Robert A. Auchter
`robert@auchterlaw.com
`Auchter PLLC
`1629 K Street, NW, Suite 300
`Washington, DC 20006
`
`
`Patent Trial and Appeal Board
`trials@uspto.gov
`
`
`
`/Ryan J. Schletzbaum/
`Ryan J. Schletzbaum
`Reg. No. 70,850
`
`
`
`
`
`10
`
`
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