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`Entered: March 28, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`FORD MOTOR COMPANY,
`Petitioner,
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`v.
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`NEO WIRELESS, LLC,
`Patent Owner.
`_______________________
`Case Unassigned
`U.S. Patent No. 10,965,512
`______________________
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`CONDITIONAL MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
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`U.S. Patent No. 10,965,512
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`Motion for Joinder
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`TABLE OF CONTENTS
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`I.
`II.
`III.
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`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`BACKGROUND AND RELATED PROCEEDINGS ................................... 3
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED ............... 4
`A.
`Legal Standards and Applicable Rules ................................................. 4
`B.
`Joinder with the Volkswagen and/or Mercedes IPR is
`Appropriate ............................................................................................ 5
`Joinder Will Not Add Any New Grounds or Issues .............................. 7
`C.
`Joinder Will Not Impact the Trial Schedule ......................................... 8
`D.
`Briefing and Discovery Will Be Simplified .......................................... 9
`E.
`Further Preconditions .......................................................................... 10
`F.
`IV. CONCLUSION .............................................................................................. 11
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`U.S. Patent No. 10,965,512
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`I.
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`Motion for Joinder
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Ford Motor Company (“Ford”) submits this Conditional Motion for Joinder
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`(“Motion”) concurrently with a “copycat” petition for inter partes review (IPR)
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`(“Petition”) of U.S. Patent No. 10,965,512 (“the ’512 patent”) (Ex. 1001), under
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`35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b).
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`At present, and not including Ford’s Petition submitted concurrently with
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`this Motion, two IPRs have been filed challenging the ’512 patent: IPR2022-
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`01539, Volkswagen Group of America, Inc. v. Neo Wireless, Inc., filed September
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`15, 2022 (the “Volkswagen IPR”) and IPR2023-00079, Mercedes-Benz USA, LLC.
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`v. Neo Wireless LLC, filed October 19, 2022 (the “Mercedes IPR”).
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`Ford’s IPR was filed after the Volkswagen and Mercedes IPRs. Accordingly,
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`Ford respectfully requests that the Board hold Ford’s Motion in abeyance until those
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`two IPRs have been instituted and/or terminated, i.e., (1) the Board has decided
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`whether to institute the Volkswagen IPR or it has been terminated, and (2) the Board
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`has decided whether to institute the Mercedes IPR or it has been terminated.
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`Ford seeks party joinder to the Volkswagen IPR, if the Volkswagen IPR has
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`been instituted and is still pending when the Board reaches this Motion. If the
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`Volkswagen IPR is not pending when the Board reaches this Motion, Ford seeks
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`party joinder to the Mercedes IPR in the alternative. As will be discussed below,
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`1
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`U.S. Patent No. 10,965,512
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`Ford will remain in the understudy role until neither of Volkswagen and Mercedes
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`Motion for Joinder
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`remain as parties in the proceeding.
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`If neither of the Volkswagen and Mercedes IPRs are pending when the Board
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`reaches Ford’s Motion and Petition, this Motion is moot and Ford asks the Board to
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`consider the Petition on its merits.
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`Joinder will efficiently resolve the challenges presented in the Petition and the
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`Volkswagen IPR and will not prejudice the patent owner, first-petitioner
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`Volkswagen, or second-petitioner Mercedes. Both the Petition and the Mercedes IPR
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`are typical “copycat” petitions. The grounds presented in the Petition are identical
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`to those in the Volkswagen IPR and therefore are also identical to the grounds
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`presented in the Mercedes IPR. Ford’s Petition is substantively identical to the
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`Volkswagen Petition—in fact, it is a verbatim copy of Volkswagen’s Petition, with
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`the exception of administrative portions (e.g., mandatory notices) and the discussion
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`of Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 11, 2020), and is
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`therefore also substantively identical to Mercedes’s Petition.
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`Moreover, if the Board grants this Motion, Petitioner agrees to act as an
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`“understudy,” following the common PTAB practice by allowing Volkswagen or
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`Mercedes (whichever is in the proceeding) to lead the joined proceedings absent
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`settlement or termination for any reason.
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`Motion for Joinder
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`Lead petitioner Volkswagen and second-petitioner Mercedes have stated to
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`Petitioner that they do not oppose joinder.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`The ’512 patent is assigned on its face to Neo Wireless LLC (“Patent Owner”).
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`Patent Owner has asserted the ’512 patent against Petitioner and numerous other
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`parties. The ’512 patent is the subject of the following civil actions: Neo Wireless,
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`LLC v. Ford Motor Company, No. 4:22-cv-00210 (W.D. Mo.), filed March 29, 2022;
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`Neo Wireless, LLC v. Nissan North America Inc., No. 3:22-cv-00220 (M.D. Tenn.),
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`filed March 29, 2022; Neo Wireless, LLC v. American Honda Motor Co., Inc., No.
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`2:22-cv-01824 (S.D. Ohio), filed March 29, 2022; Neo Wireless LLC v. Tesla, Inc.,
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`No. 2:22-cv-00095 (E.D. Tex.), filed March 29, 2022; Neo Wireless LLC v. General
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`Motors Company, No. 2:22-cv-00094 (E.D. Tex.), filed March 29, 2022; Neo
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`Wireless LLC v. Toyota Motor North America, Inc., No. 2:22-cv-00093 (E.D. Tex.),
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`filed March 29, 2022; Neo Wireless, LLC v. Volkswagen Group of America, Inc.
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`(TV2), No. 1:22-cv-00076 (E.D. Tenn.), filed March 29, 2022; Neo Wireless, LLC v.
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`Volkswagen Group of America, Inc., No. 2:22-cv-11404 (E.D. Mich.), filed June 28,
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`2022; Neo Wireless LLC v. Toyota Motor North America, Inc., No. 2:22-cv-11406
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`(E.D. Mich.), filed June 28, 2022; Neo Wireless LLC v. General Motors Company,
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`No. 2:22-cv-11407 (E.D. Mich.), filed June 28, 2022; Neo Wireless LLC v. Tesla,
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`Inc., No. 2:22-cv-11408 (E.D. Mich.), filed June 28, 2022; Neo Wireless, LLC v.
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`Nissan North America Inc., No. 2:22-cv-11405 (E.D. Mich.), filed June 29, 2022;
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`Motion for Joinder
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`Neo Wireless, LLC v. American Honda Motor Co., Inc., No. 2:22-cv-11403 (E.D.
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`Mich.), filed June 27, 2022; Neo Wireless, LLC v. Ford Motor Company, No. 2:22-
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`cv-11402 (E.D. Mich.), filed June 27, 2022; In re Neo Wireless, LLC Patent
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`Litigation, No. 2:22-md-03034 (E.D. Mich.), filed June 23, 2022; Neo Wireless, LLC
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`v. Mercedes-Benz USA, LLC, No. 3:22-cv-00780 (M.D. Fla.), filed July 15, 2022;
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`Neo Wireless, LLC v. Mercedes-Benz USA, LLC, No. 2:22-cv-11769 (E.D. Mich.),
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`filed August 2, 2022; Neo Wireless, LLC v. FCA US LLC, No. 3:22-cv-01252 (N.D.
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`Ohio), filed July 15, 2022; and Neo Wireless, LLC v. FCA US LLC, No. 2:22-cv-
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`11770 (E.D. Mich.), filed August 2, 2022.
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`In addition, the Volkswagen and Mercedes IPRs (also challenging the ’512
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`patent) are currently in the pre-institution phase.
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`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`A. Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an existing
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`IPR proceeding. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Sony
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`Mobile Commc’ns AB v. Ancora Techs., Inc., IPR2021-00663, Paper 17 at 29-33
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`(June 10, 2021); Dell Inc. v. Network-1 Sec. Sols., Inc., IPR2013-00385, Paper 17 at
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`4-6 (July 29, 2013); Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of
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`Jerusalem, IPR2013-00326, Paper 15 at 3-7 (Sept. 24, 2013); Microsoft Corp. v.
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`Proxyconn, Inc., IPR2013-00109, Paper 15 at 3-5 (Feb. 25, 2013).
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`Motion for Joinder
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`“The Board will determine whether to grant joinder on a case-by-case basis,
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`taking into account the particular facts of each case, substantive and procedural
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`issues, and other considerations.” Dell, IPR2013-00385, Paper 17 at 3. A motion for
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`joinder should:
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`(1) set forth the reasons why 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
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`Id. at 4 (citing Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24,
`2013)).
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`B.
`Joinder with the Volkswagen and/or Mercedes IPR is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 9
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`(Aug. 24, 2016) (internal quotation marks omitted). Here, joinder is appropriate
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`because there are no substantive differences between the Petition and the
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`Volkswagen and Mercedes IPRs. All three petitions have identical unpatentability
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`arguments, grounds and supporting evidence, and challenge the same claims.
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`Motion for Joinder
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`When, as here, the petitions are identical, joinder should be granted as a matter
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`of right. See 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)
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`(“The Office anticipates that joinder will be allowed as of right—if an inter partes
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`review is instituted on the basis of a petition, for example, a party that files an
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`identical petition will be joined to that proceeding, and thus allowed to file its own
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`briefs and make its own arguments.”)
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`Further, Ford may be prejudiced if it is not permitted to join the IPR. Patent
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`Owner has asserted the ’512 patent against Ford in pending litigation. See supra
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`Related Proceedings. Ford should be permitted to join the IPR(s) to participate in
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`proceedings affecting a patent asserted against it, and thereby allowed to continue
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`the proceedings should the other parties settle under 37 C.F.R. § 42.74 before a final
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`written decision is issued. See Lowes Cos. Inc. v. Nichia Corp., IPR2017-02011,
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`Paper 13 at 19 (Mar. 12, 2018) (“[d]enial of the Petition in part would prejudice the
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`Petitioner in this proceeding should the Vizio Petitions be resolved by settlement”).
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`In addition, permitting Ford to join these proceedings helps ensure that the
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`patentability of the challenged claims will ultimately be decided by the Board,
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`efficiently protecting the public and providing the patent owner with predictable and
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`reliable expectations regarding its patent rights.
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`Thus, this factor favors joinder.1
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`Motion for Joinder
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`C.
`Joinder Will Not Add Any New Grounds or Issues
`The Petition does not include any new grounds of unpatentability. In fact, the
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`Petition and its accompanying expert declaration are substantively identical to the
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`Volkswagen and Mercedes IPRs and their accompanying expert declarations.2 See
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`1 The factors outlined by General Plastic Industries Co. v. Canon Kabushiki Kaisha,
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`IPR2016-01357, Paper 19 (Sept. 6, 2017), are not particularly relevant here “where
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`a different petitioner files a ‘me-too’ or ‘copycat’ petition in conjunction with a
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`timely motion to join.” See, e.g., Celltrion, Inc. v. Genentech, Inc., IPR2018-01019,
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`Paper 11 at 9-11 (Oct. 30, 2018); Pfizer, Inc. v Genentech, Inc., IPR2017-02063,
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`Paper 25 at 7-8 (Feb. 21, 2018).
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`2 Ford submitted two expert declarations with its Petition. The first declaration (Ex.
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`1003) is a copy of Volkswagen’s expert declaration. Although Volkswagen did not
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`object to Ford copying and joining its IPR, Volkswagen refused to allow Ford to
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`retain Volkswagen’s expert solely for the purpose of this “copycat” IPR.
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`Accordingly, Ford retained its own expert, who has reviewed and adopted the
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`Volkswagen technical expert’s testimony as his own. Ford’s expert declaration is a
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`verbatim copy of Volkswagen’s with the exception of the expert’s qualifications and
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`Everlight Elecs. Co. v. Document Sec. Sys., Inc., IPR2018- 01260, Paper 12 at 6-7
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`(Nov. 14, 2018) (granting motion for joinder where petitioner submitted separate but
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`substantially identical expert declaration); see also Celltrion, IPR2018-01019, Paper
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`11 at 14 (same); Sun Pharm. Indus. Ltd. v. Merck Sharp & Dohme Corp., IPR2020-
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`01072, Paper 12 at 7 (Sept. 1, 2020) (same). Therefore, this factor weighs in favor
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`of joinder.
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`D.
`Joinder Will Not Impact the Trial Schedule
`Joinder will not impact the trial schedule because Ford does not seek to
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`introduce any new grounds or challenge any new claims. Moreover, Patent Owner
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`will not require any discovery beyond what it will need in the previously filed IPRs.
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`Because Ford fully adopted Volkswagen’s (and Mercedes’s) patentability
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`arguments, art, and evidence, and because Ford will remain in the understudy role
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`so long as Volkswagen or Mercedes remain in the proceeding, joining Ford will not
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`affect the trial schedule.
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`Accordingly, this factor also favors joinder.
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`personal information. Ford will rely on its own expert’s declaration only if
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`Volkswagen and Mercedes are not parties to this IPR, i.e., if Ford must shed its
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`understudy role.
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`E.
`Briefing and Discovery Will Be Simplified
`Joining Ford should not require any additional briefing or discovery. Ford’s
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`Petition adds no new issues whatsoever. Further, Ford agrees to take an understudy
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`role, which will simplify briefing and discovery. Volkswagen’s lead counsel will
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`act as the lead counsel so long as Volkswagen remains in the proceeding, and if
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`Mercedes is in the proceeding (and Volkswagen is not), Mercedes’ counsel will act
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`as lead counsel so long as Mercedes remains in the proceeding. Likewise
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`Volkswagen’s counsel will submit all briefs, and take and defend all depositions,
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`take the lead for petitioners on any conference calls, and will argue the case before
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`the Board, so long as Volkswagen remains in the proceeding. Likewise, if
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`Volkswagen is not in the proceeding, Mercedes counsel will assume Volkswagen’s
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`lead role. So long as Volkswagen and/or Mercedes remain in the proceeding, Ford’s
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`counsel will be present only to observe and to answer any questions pertaining
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`specifically to Ford as the joining party, should any such questions arise.
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`By Petitioner accepting an “understudy” role, the parties can comply with the
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`trial schedule assigned to the Volkswagen IPR without any duplicative efforts by
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`the Board or the Patent Owner. See Sony Corp. v. Memory Integrity, LLC, IPR2015-
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`01353, Paper 11 at 6-9 (Oct. 5, 2015) (granting IPR and motion for joinder because
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`“joinder would increase efficiency by eliminating duplicative filings and discovery,
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`and would reduce costs and burdens on the parties as well as the Board” where
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`petitioners agreed to an understudy role). Petitioner is further willing to agree to any
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`Motion for Joinder
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`other reasonable conditions the Board deems necessary. Therefore, this final factor
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`also weighs in favor of joinder.
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`F.
`Further Preconditions
`In opposing a similar joinder motion filed by Mercedes, Patent Owner argues
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`that several preconditions should be met prior to joinder. See Mercedes-Benz USA,
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`LLC, IPR2023-00079, Paper 7 at 2 (Jan. 20, 2023). Patent Owner argues that
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`Mercedes be denied any right to participate in the joined proceeding without
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`authorization from the Board, that Mercedes’ exhibits, including its expert
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`declaration, be excluded from the record, and that Volkswagen be shown to have
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`accepted Mercedes’ understudy role in the joined proceeding. Id. If Patent Owner
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`makes the same arguments here, Ford agrees with them only to the extent the Board
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`deems them necessary for joinder.
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`Ford has agreed to assume and remain in the understudy role unless
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`Volkswagen and Mercedes are not participating in the joined proceedings. And as
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`explained earlier, Ford will rely on the testimony of its expert declarant (Dr.
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`Cooklev) if, and only if, Ford is thrust from its position as an understudy because
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`Volkswagen and Mercedes are not participating in the joined proceedings and no
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`petitioner expert has yet been deposed and the time to depose the expert has not
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`expired.
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`Motion for Joinder
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`To be sure, the Board regularly permits joinder of petitioners who rely on
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`different declarants when, as is the case here, the joining petitioner’s expert presents
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`the same opinions as in the earlier-filed IPR. See, e.g., Everlight Elecs. Co. v.
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`Document Sec. Sys., Inc., IPR2018-01225, Paper 14 at 5-9 (Sept. 27, 2018); see also
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`Pfizer Inc. v. Sanofi-Aventis Deutschland GmbH, IPR2019-00981, Paper 12 at 4-7
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`(Aug. 15, 2019); Microsoft Corp. v. Koninklijke Philips N.V., IPR2017-01754, Paper
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`16 at 6, 13-16 (Nov. 29, 2017).
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`Consistent with such cases, Ford agrees to rely entirely on, and be bound by,
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`the declaration and deposition of Volkswagen’s (or Mercedes’s) expert declarant in
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`the joined IPR, so long as Volkswagen (or Mercedes) remains a party until its expert
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`is deposed. See Everlight Elecs., IPR2018-01225, Paper 14 at 6. And if Volkswagen
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`and Mercedes are not parties in the IPR, Petitioner will rely on Dr. Cooklev’s
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`substantively identical declaration and the Patent Owner can depose Dr. Cooklev.
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`Joinder accordingly presents no risk of duplicative declarations, depositions, or other
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`evidence.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests institution of IPR
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`proceedings based on its Petition and joinder with any proceeding instituted based
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`on the Volkswagen or Mercedes IPR.
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`Dated: March 28, 2023
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`Motion for Joinder
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`Respectfully submitted,
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`By: / Jonathan M. Strang /
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`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
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`Counsel for Petitioner Ford Motor Company
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`Motion for Joinder
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a true and complete copy of Conditional
`Motion For Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and
`42.122(b) was served on the official correspondence address for the patent
`shown in Patent Center:
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`Anthony Volpe
`C. Koenig
`VOLPE KOENIG
`30 SOUTH 17TH STREET, 18TH FLOOR
`PHILADELPHIA, PA 19103
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`via FEDERAL EXPRESS next business day delivery, on March 28, 2023.
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`By: / Jonathan M. Strang /
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`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 1.202.637.2200
`Fax: 202.637.2201
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`Counsel for Petitioner Ford Motor Company
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