UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Cooler Master Co., Ltd.
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`Petitioner
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`v.
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`Asetek Danmark A/S,
`Patent Owner
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`
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`Patent No. 8,245,764
`Title: COOLING SYSTEM FOR A COMPUTER SYSTEM
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`IPR Case No.: IPR2023-00668
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`PETITIONER’S MOTION FOR JOINDER UNDER 35
`U.S.C. § 315(c), 37 C.F.R. § 42.22 AND § 42.122(b)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Cooler Master Co., Ltd.
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`Petitioner
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`v.
`
`Asetek Danmark A/S,
`Patent Owner
`
`
`
`Patent No. 8,245,764
`Title: COOLING SYSTEM FOR A COMPUTER SYSTEM
`
`IPR Case No.: IPR2023-00668
`
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`PETITIONER’S MOTION FOR JOINDER UNDER 35
`U.S.C. § 315(c), 37 C.F.R. § 42.22 AND § 42.122(b)
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`IPR2023-00668
`Petitioner’s Motion for Joinder
`TABLE OF CONTENTS
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`Page
`STATEMENT OF THE PRECISE RELIEF REQUESTED .................................. 1
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`REASONS FOR THE RELIEF REQUESTED ..................................................... 2
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`I.
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`II.
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`A.
`B.
`C.
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`D.
`E.
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`Legal Standard ............................................................................................. 2
`Reasons Why Joinder Is Appropriate .......................................................... 2
`The Instant Petition Does Not Raise Any New Grounds of
`Unpatentability ............................................................................................ 3
`Joinder Will Not Affect the Schedule in the Apaltek IPR ........................... 3
`Joinder will Simplify Briefing Because Petitioner Has Agreed to
`Consolidated Filings and an Understudy Role ........................................... 4
`Joinder Will Not Prejudice Patent Owner .................................................... 5
`Considerations Under §§ 314(a) and 325(d) ................................................. 5
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`F.
`G.
`III. CONCLUSION ..................................................................................................... 6
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`IPR2023-00668
`Petitioner’s Motion for Joinder
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2018-00580, Paper 13 (Aug. 21, 2018) ................................................................ 6
`Cooler Master Co., Ltd. v. Asetek Danmark A/S,
` Case No. 5:21-cv-04627-EJD (N.D. Cal. June 14, 2022) ......................................... 5
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper 17 (PTAB July 29, 2013) ...................................................... 2
`Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
`IPR2014-00556, Paper 19 (PTAB July 9, 2014) ........................................................ 2
`Noven Pharm., Inc. v. Novartis AG,
`IPR2014-00550, Paper 38 (PTAB April 10, 2015) .................................................... 4
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper 12 (PTAB Aug. 24, 2016) .................................................... 3
`Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S,
`IPR2022-01317 (Feb. 6, 2023) ........................................................................... 1, 3, 6
`Federal Statutes
`35 U.S.C. § 315(c) ........................................................................................................... 1
`Regulations
`37 C.F.R. § 42.22 ............................................................................................................. 1
`37 C.F.R. § 42.122(b) ...................................................................................................... 1
`Other Authorities
`U.S. Patent No. 8,245,764 ....................................................................................... 1, 3, 6
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`ii
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`IPR2023-668 Petitioner’s Motion for Joinder
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Cooler Master Co., Ltd. (“CMC” or “Petitioner”) respectfully submits this
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`Motion for joinder under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b),
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`concurrently with its Petition (“Instant Petition”) for inter partes review of U.S.
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`Patent No. 8,245,764 (the “’764 patent”).
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`Joinder is appropriate because the Instant Petition is essentially a copy of
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`the petition filed in Shenzhen Apaltek Co., Ltd. v. Asetek Danmark A/S,
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`IPR2022-01317 (“the Apaltek Petition”), on which trial was instituted on
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`February 6, 2023 (the “Apaltek IPR”). The Instant Petition includes identical
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`grounds concerning the same claims challenged in the Apaltek Petition and
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`therefore would create no additional burden for the Board, Apaltek, or the Patent
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`Owner, if joined.
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`Petitioner stipulates that if joinder is granted, it will cooperate with
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`Shenzhen Apaltek Co., Ltd. (“Apaltek”) in the joined proceeding, whether at
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`hearings, at depositions, in filings, or otherwise, as outlined below. Joinder will
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`not impact the trial schedule because the Apaltek IPR proceeding is in its early
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`stages. Joinder would therefore lead to an efficient resolution of the validity of
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`the ’764 patent.
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`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and
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`42.122(b), as it is submitted within one month of February 6, 2023, the date on
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`which the Apaltek IPR was instituted.
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`1
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`IPR2023-668 Petitioner’s Motion for Joinder
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`II. REASONS FOR THE RELIEF REQUESTED
`A.
`Legal Standard
`In determining whether to join one IPR proceeding to another, the Board
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`considers: (1) reasons why joinder is appropriate; (2) any new grounds of
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`unpatentability asserted in the petition; (3) what impact (if any) joinder would
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`have on the trial schedule for the existing review; and (4) specifically how
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`briefing and discovery may be simplified. See Dell, Inc. v. Network-1 Security
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`Solutions, Inc., IPR2013-00385, Paper 17 at 4 (PTAB July 29, 2013). Each of
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`these factors favors joinder here.
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`B. Reasons Why Joinder Is Appropriate
`Joinder is appropriate because it is the most efficient way to resolve the
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`two related proceedings. The Instant Petition is intentionally identical in
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`substance to the Apaltek Petition and does “not present new issues that might
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`complicate or delay” the Apaltek IPR. See Enzymotec Ltd. v. Neptune Techs &
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`Bioresources, Inc., IPR2014-00556, Paper 19 (PTAB July 9, 2014). The only
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`difference between the Instant Petition and the Apaltek Petition are the sections
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`on Real Party-In-Interest, Related Matters, and Grounds for Standing, which
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`have been appropriately updated.
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`Joinder would therefore have little, if any, impact on the Apaltek IPR
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`because no new grounds would be added, the schedule would be unaffected, no
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`additional briefing or discovery would be required, and no additional burdens
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`would be placed on the Patent Owner, as detailed below. Accordingly, joinder is
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`IPR2023-668 Petitioner’s Motion for Joinder
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`appropriate because it ensures a just, speedy, and inexpensive resolution of these
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`proceedings. Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`12 at 9 (PTAB Aug. 24, 2016) (recognizing that the Board “routinely grants
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`motions for joinder where the party seeking joinder introduces identical
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`arguments and the same grounds raised in the existing proceeding.”).
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`C.
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`The Instant Petition Does Not Raise Any New Grounds of
`Unpatentability
`The Instant Petition relies on the same grounds of unpatentability of claims
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`1-30 of the ’764 patent that were instituted in the Apaltek IPR. See IPR2022-
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`01317, Paper 7 (Feb. 6, 2023). As discussed above, the evidence and arguments
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`supporting the Instant Petition are substantively identical to the evidence and
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`arguments supporting the Apaltek IPR.
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`D.
`Joinder Will Not Affect the Schedule in the Apaltek IPR
`Joinder will not affect the schedule in the Apaltek IPR, because Petitioner
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`agrees to the deadlines set forth in the Apaltek IPR Scheduling Order. See
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`IPR2022-01317, Paper 8 (Feb. 6, 2023). Since the Instant Petition does not raise
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`any new arguments and is substantively identical to the Apaltek IPR petition,
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`there should be no need for Patent Owner to submit a preliminary response to the
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`Instant Petition. Joinder would allow the Board and parties to focus on the
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`merits of the unpatentability challenges to claims 1-30 of the ’764 patent in a
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`single consolidated proceeding without duplication of effort, and in an
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`efficient manner.
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`3
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`IPR2023-668 Petitioner’s Motion for Joinder
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`E.
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`Joinder will Simplify Briefing Because Petitioner Has Agreed
`to Consolidated Filings and an Understudy Role
`Petitioner agrees to take an “understudy” role as long as Apaltek remains a
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`party to the Apaltek IPR, which will simplify briefing and discovery.1 See, e.g.,
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`Noven Pharm., Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5 (PTAB April
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`10, 2015). In this role, Petitioner agrees to the following conditions:
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`(a)
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`Petitioner will not make any substantive filings and shall be bound
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`by the filings of Apaltek, unless a filing concerns termination and settlement, or
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`issues solely involving Petitioner.
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`(b)
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`Petitioner will not present any argument or make any presentation at
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`oral hearing unless an issue solely involves Petitioner, or when addressing Board-
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`approved motions that do not affect Apaltek.
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`(c)
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`Petitioner will not seek to cross-examine or defend the cross-
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`examination of any witness, unless the topic of cross-examination concerns
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`issues solely involving Petitioner, within the time permitted by Apaltek alone and
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`with Apaltek’s agreement.
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`(d)
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`Petitioner will not seek discovery from Patent Owner, unless issues
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`arise that are unique to, and only applicable to, Petitioner.
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`(e)
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`Petitioner will not rely on expert testimony beyond that submitted
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`1 In the event Apaltek no longer participates in the IPR proceedings, Petitioner
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`would take over primary responsibility for subsequent filings and discovery.
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`4
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`IPR2023-668 Petitioner’s Motion for Joinder
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`by Apaltek unless and until Apaltek is terminated as party to the proceedings,
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`prior to any necessary depositions. Petitioner’s expert, Dr. Karamanis, is the
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`same expert used in the Apaltek IPR, and his expert declaration submitted herein
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`is substantively identical to the declaration he submitted in the Apaltek IPR.
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`F.
`Joinder Will Not Prejudice Patent Owner
`Petitioner’s joining of the Apaltek IPR should not result in any prejudice to
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`Patent Owner. No additional grounds or arguments are being introduced, no new
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`evidence or issues are being added, and no additional discovery, briefing or oral
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`argument should be necessary as a result of the Instant Petition and joinder.
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`Additionally, joinder decreases the number of filings by the parties, eliminates
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`duplication of effort, and will create case management efficiencies for the Board
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`and Patent Owner.
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`G. Considerations Under §§ 314(a) and 325(d)
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`Petitioner respectfully requests that the Board decline to exercise its
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`discretion to deny institution.
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`§314(a): On June 14, 2022, the co-pending district court litigation was
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`stayed pending the outcome of related IPR proceedings, which now include the
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`Apaltek IPR that Petitioner seeks to join. Cooler Master Co., Ltd. v. Asetek
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`Danmark A/S, Case No. 5:21-cv-04627-EJD (N.D. Cal. June 14, 2022) (Doc.
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`42). Because the co-pending litigation is stayed, there is virtually no risk that the
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`Board’s efforts will be rendered moot by a district court decision issued before
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`5
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`IPR2023-668 Petitioner’s Motion for Joinder
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`the Apaltek IPR concludes. Further, to alleviate any concerns of duplicative
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`efforts between the district court and the Board, Petitioner hereby stipulates that
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`it will not pursue, in district court, invalidity based on any instituted IPR ground
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`if the joinder is granted.
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`§325(d): This is the only petition filed by Petitioner regarding this patent.
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`Petitioner had no involvement in prior petitions challenging this patent. Where a
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`petitioner files a “copycat” petition in conjunction with a timely motion for
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`joinder and agrees to assume a “passive understudy role,” the General Plastic
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`factors are “effectively neutraliz[ed].” Apple Inc. v. Uniloc 2017 LLC, IPR2018-
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`00580, Paper 13 at 10-11 (Aug. 21, 2018).
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`III. CONCLUSION
`For the reasons above, Petitioner respectfully request that its Petition for
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`Inter Partes Review of the ’764 patent be instituted and that Petitioner be joined
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`to the Apaltek IPR, IPR2022-01317.
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`Dated: March 6, 2023
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`Respectfully submitted,
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`Greenberg Traurig, LLP
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`/James L. Ryerson/
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`James L. Ryerson (Reg. No. 64,617)
`Attorneys for Petitioner
`Cooler Master Co., Ltd.
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`6
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`IPR2023-668 Petitioner’s Motion for Joinder
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a true and correct copy of the PETITIONER’S
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c), 37 C.F.R. § 42.22 AND §
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`42.122(b), was served on counsel of record for the ’764 patent by Federal Express
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`and electronic mail. Both parties consented to electronic service prior to the filing of
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`this Petition.
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`Eric Rapiti
`Eric.Raciti@finnegan.com
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`Two Seaport Lane
`Boston, MA 02210-2001
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`Robert F. McCauley
`robert.mccauley@finnegan.com
`Arpita Bhattacharyya
`arpita.bhattacharyya@finnegan.com
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`3300 Hillview Avenue
`Palo Alto, California 94304
`William Esper
`William.Esper@finnegan.com
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`1875 Explorer St Suite 800
`Reston, VA 20190
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`901 NEW YORK AVENUE, NW
`WASHINGTON DC 20001-4413
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`Date: March 6, 2023
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`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`By: /James L. Ryerson/
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`James L. Ryerson (Reg. No. 64,617)
`Counsel for Petitioner
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`7
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