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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`____________
`
`Case IPR2023-00764
`Patent US 10,965,512
`____________
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Page
`INTRODUCTION ......................................................................................... 1
`
`FORD SHOULD NOT BE JOINED WITH ANY RIGHTS TO TAKE
`ACTIONS WITHOUT PRIOR BOARD AUTHORIZATION. ............... 3
`
`III. FORD SHOULD BE PROHIBITED FROM OFFERING ITS OWN
`SEPARATE EVIDENCE. ............................................................................. 7
`
`IV. CONCLUSION ............................................................................................10
`
`
`
`i
`
`
`
`
`
`AGENCY DECISIONS
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Argentum Pharma. LLC v. Janssen Oncology Inc.,
`IPR2016-01317, Paper 9 (Sep. 19, 2016) ............................................................. 9
`
`GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge I,
` IPR2017-00919, Paper 12 (June 9, 2017) ............................................................ 5
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01453, Papers 16, 35, 36 (PTAB Mar. 14, Jun. 27, & Jul. 26, 2016) ... 8
`
`MSN Labs. Private Ltd. v. Bausch Health Ireland Ltd.,
`IPR2023-00016, Paper 12 (Nov. 29, 2022) .......................................................... 2
`
`Mylan Pharms. Inc. v. Janssen Oncology, Inc.,
`IPR2016-01332, Paper 21 (Jan. 10, 2017) ............................................................ 9
`
`Sony Corp. of Am. v. Network-1 Security Sols., Inc.,
`IPR2013-00386, Paper 16 (July 29, 2013) .....................................................1, 10
`
`Splunk Inc. v. Sable Networks, Inc.,
`IPR2022-00228, Paper 9 (Apr. 4, 2022) ...........................................................6, 7
`
`Synaptics Inc. v. Amkor Tech., Inc.,
`IPR2017-00085, Paper 12 (Apr. 18, 2017) ........................................................... 1
`
`Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLC,
`IPR2021-00738, Paper 9 (June 14, 2021) .........................................................5, 6
`
`REGULATIONS
`
`37 C.F.R. § 42.1(b) .................................................................................................... 8
`
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`37 C.F.R. § 42.20(c) ................................................................................................... 1
`
`37 C.F.R. § 42.25(a)(1) .............................................................................................. 1
`
`37 C.F.R. § 42.6(d) ..................................................................................................10
`
`ii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner Neo Wireless, LLC hereby responds to Petitioner Ford Motor
`
`Company’s (“Ford”) Motion For Joinder (Paper 3, “Mot.”), which requests joinder
`
`of this IPR with IPR2022-01539 filed by Volkswagen Group of America, Inc.
`
`(“Volkswagen”) and IPR2023-00079 filed by Mercedes-Benz USA, LLC
`
`(“Mercedes”). This motion is timely under 37 C.F.R. § 42.25(a)(1).
`
`“Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary.” Sony Corp. of Am. v. Network-1 Security Sols., Inc.,
`
`IPR2013-00386, Paper 16, 3 (July 29, 2013). As moving party, Ford has the
`
`burden to establish entitlement to relief. 37 C.F.R. §§ 42.20(c), 42.122(b).1
`
`If the Board institutes review in this case, joinder should only be granted
`
`with additional conditions limiting Ford’s participation as joined understudy
`
`petitioner, such as those the Board has imposed in other cases, to reduce the
`
`inarguable burden the requested joinder will create in these speedy proceedings.
`
`
`1 The Motion is moot if review of Ford’s, or Mercedes’s and Volkswagen’s
`
`Petitions, are denied. See Synaptics Inc. v. Amkor Tech., Inc., IPR2017-00085,
`
`Paper 12, 11 (Apr. 18, 2017). This Response assumes, arguendo, institution of
`
`both petitions.
`
`1
`
`
`
`
`
`Ford concedes that measures limiting its joined participation are appropriate,
`
`and pre-emptively “agrees” to several such limits. Mot., 2, 9-10. The Board
`
`should, however, grant joinder, if at all, only with further limits.
`
`Ford has said it “will remain in the understudy role” until the target IPR
`
`petitioner is no longer a party in the proceeding. Mot., 2. But what does this
`
`mean? The Board has stated that “an ‘understudy role’ means that [the petitioner
`
`seeking joinder] would not make any substantive filing,” not make “oral hearing
`
`presentations,” “not seek to take cross-examination testimony of any witness or
`
`have a role in defending the cross-examination of a witness beyond mere
`
`observation,” not seek “other discovery,” and, absent termination of the initial
`
`petitioner “before the proceeding is complete,” “remain completely inactive as the
`
`understudy with the exception being ministerial issues specifically directed to [the
`
`petitioner seeking joinder] (e.g., an update to [petitioner’s] Mandatory Notices or
`
`Powers of Attorney).” MSN Labs. Private Ltd. v. Bausch Health Ireland Ltd.,
`
`IPR2023-00016, Paper 12, 3-4 (Nov. 29, 2022). Patent Owner agrees with this
`
`understanding of the understudy role. The Board here should make this explicit.
`
`In other words, Patent Owner requests that the Board in fact hold Ford to a silent
`
`understudy role. Unless the promised “understudy role” is expressly clarified as
`
`discussed below, Patent Owner respectfully opposes granting the subject joinder
`
`request.
`
`2
`
`
`
`
`
`At the very least, Patent Owner respectfully submits that the Board should
`
`grant joinder only on the further conditions:
`
`(1) That Ford be denied any right to participate in the joined proceeding,
`
`including filing papers, engaging in discovery, or participate in
`
`depositions and oral argument, jointly or otherwise, without first
`
`obtaining authorization from the Board; and
`
`(2) That Ford’s exhibits, including its separate expert declaration (Ex. 1035),
`
`not be added to the record of this case, and that Ford have no right as
`
`understudy petitioner to submit any separate exhibits or other materials.
`
`In the absence of clarity on what the “understudy” role does and does not
`
`entail, granting joinder would create undefined and unacceptable risks of making
`
`the original case, if instituted, substantially more complicated, expensive, and
`
`unfair.
`
`II. FORD SHOULD NOT BE JOINED WITH ANY RIGHTS TO TAKE
`ACTIONS WITHOUT PRIOR BOARD AUTHORIZATION.
`
`In accordance with past proceedings, including those cited below, the Board
`
`should grant Ford’s joinder request only if Ford is given no right thereby to
`
`participate, as a joined party, without express prior Board authorization.
`
`Ford pledges that if joined it will submit no separate arguments—essentially,
`
`to act as an understudy to Mercedes and Volkswagen—because it “fully adopted”
`
`3
`
`
`
`
`
`Volkswagen and Mercedes’s “arguments, art, and evidence.” Mot., 8. There is no
`
`apparent reason why Ford, as joined understudy petitioner, should be given any
`
`right to take any action in the proceedings whatsoever without prior express Board
`
`permission.
`
`Moreover, as further explained infra § III, while Ford has “agreed” to let
`
`either Volkswagen or Mercedes take the “lead” (Mot., 2), Ford presents no proof
`
`that either Mercedes or Volkswagen agrees to the limitations Ford says Mercedes
`
`and Volkswagen will follow, instead simply saying that “they do not oppose
`
`joinder” (Mot., 3), and furthermore, has not promised not to submit its own
`
`separate evidence. Indeed, Ford has already begun to submit its own separate
`
`evidence, including separate witness testimony, and, if joinder were granted, may
`
`continue to separately proffer still more. Furthermore, Ford itself admits that its
`
`Petition is not fully identical to Volkswagen’s, stating that Ford’s “discussion of
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 11, 2020)” is not
`
`identical. Mot., 2.
`
`In similar factual circumstances in past proceedings, where joinder has not
`
`been denied altogether, the Board has addressed the concerns above by imposing
`
`just such restrictions on joinder petitioners—i.e., allowing joinder only on
`
`condition that the joining petitioner has no right to participate or submit any
`
`materials or arguments without express permission from the Board.
`
`4
`
`
`
`
`
`For example, in GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge I,
`
`IPR2017-00919, the petitioner seeking joinder made promises essentially similar to
`
`Ford’s. There, the petitioner promised that, if joinder were granted, it would stay
`
`“in a circumscribed ‘understudy’ role without a separate opportunity to actively
`
`participate,” and “w[ould] not file additional written submissions, nor . . . pose
`
`questions at depositions or argue at oral hearing without permission of” the first
`
`petitioner. Id., Paper 12, 8-9 (June 9, 2017). The Board “agree[d] with Patent
`
`Owner, though, that given its ‘understudy’ role, Petitioner should be permitted to
`
`file papers, engage in discovery, and participate in depositions and oral argument
`
`only after obtaining authorization from the Board, not [the first petitioner].” Id.,
`
`9.2 The Board therefore granted the petitioner’s motion for joinder in that case
`
`only on the condition that the petitioner was given no right to participate in the
`
`joined proceedings at all, and would have to contact the Board to request
`
`permission before taking any action. See id.
`
`For another example, in Taiwan Semiconductor Manufacturing Co. Ltd. v.
`
`Arbor Global Strategies LLC, IPR2021-00738, the petitioner seeking joinder stated
`
`it was “willing to accept a limited, ‘understudy role’” and submitted conditions of
`
`such a role, one of which would give the petitioner in the target IPR “full control
`
`over all … filings unless a filing solely concerns issues that do not involve [the
`
`
`2 All emphasis is added unless stated otherwise.
`
`5
`
`
`
`
`
`target IPR petitioner].” Id., Paper 9, 9 (June 14, 2021). Such a condition would
`
`have permitted the joining petitioner to make certain filings without prior Board
`
`authorization. The Board rejected the petitioner’s terms. Instead, the Board
`
`granted joinder only under more restrictive terms like those Patent Owner requests
`
`here—ordering that “(1) [the target IPR petitioner] alone is responsible for all
`
`petitioner filings in the proceeding until such time that it is no longer an entity in
`
`the proceeding, and (2) Petitioner is bound by all filings by [the target IPR
`
`petitioner] in the proceeding,” further stating that “Petitioner must obtain prior
`
`Board authorization to file any paper or take any action on its own in the
`
`proceeding, so long as [the target IPR petitioner] remains as a non-terminated
`
`petitioner in the proceeding.” Id., 10. Thus, just like in Global Foundries, the
`
`joining petitioner was barred from any substantive filings without obtaining Board
`
`permission in advance.
`
`For yet another example, in Splunk Inc. v. Sable Networks, Inc., IPR2022-
`
`00228, the Board permitted joinder, limiting the “Petitioner’s participation in the
`
`[target] IPR, such that … (2) Petitioner must obtain Board authorization prior to
`
`filing any paper or exhibit or taking any action on its own until [the target IPR
`
`petitioner] is terminated from the [target] IPR.” Id., Paper 9, 7 (Apr. 4, 2022). The
`
`Board stated that it was “persuaded that, with the appropriate conditions,
`
`Petitioner’s joinder will have minimal impact on the [target] IPR,” where the
`
`6
`
`
`
`
`
`“appropriate conditions” required, among other things, that authorization be given
`
`by the Board prior to the joining petitioner “taking any action on its own” or filing
`
`anything in the target IPR. Id., 6. For similar reasons, such a condition should be
`
`imposed on Ford here as well.
`
`Ford has no more justification to a greater right to participate in this case
`
`than the petitioners in GlobalFoundries, Taiwan Semiconductor, Splunk, and MSN
`
`Laboratories , and if joinder were to be granted here, the same condition requiring
`
`Board authorization for any involvement should be imposed. Thus, the Board
`
`should not grant Ford joinder except if Ford is, inter alia, limited to the role of a
`
`silent understudy, with no right to file papers, engage in discovery, or participate in
`
`depositions and oral argument without first obtaining authorization from the Board.
`
`III. FORD SHOULD BE PROHIBITED FROM OFFERING ITS OWN
`SEPARATE EVIDENCE.
`
`Aside from other restrictions the Board places on Ford, if its joinder request
`
`to Volkswagen’s or Mercedes’ cases are granted, then Ford’s exhibits in this case,
`
`including its separate witness declaration, should not become exhibits in
`
`Volkswagen’s or Mercedes’ cases, and Ford should be granted no right to file any
`
`exhibits in the joined case.
`
`Ford pledges that if joined, it will refrain from certain independent action.
`
`Ford states that it will “allow[] Volkswagen or Mercedes (whichever is in the
`
`7
`
`
`
`
`
`proceeding) to lead the joined proceedings absent settlement or termination for any
`
`reason” (Mot., 2) and that “Ford’s counsel will be present only to observe and to
`
`answer any questions pertaining specifically to Ford as the joining party, should
`
`any such questions arise.” Mot., 9. However, Ford does not agree to not file
`
`separate exhibits.3 Indeed, Ford has already begun to file separate exhibits,
`
`including an expert declaration signed by Mr. Todor Cooklev, whose testimony
`
`does not appear as an exhibit in the Volkswagen or Mercedes IPRs. Ex. 1035.
`
`Allowing Ford to add its own separate, different evidence, such as Mr.
`
`Cooklev’s declaration, to the record would be in tension with the rules governing
`
`inter partes reviews, designed “to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” 37 C.F.R. § 42.1(b). Ford’s separately filed
`
`exhibits, including the Cooklev declaration, should be required to be withdrawn
`
`and should not become part of the record of the joined proceedings.
`
`To be sure, Ford conditionally agrees to “allow[] Volkswagen or Mercedes
`
`(whichever is in the proceeding) to lead the joined proceedings absent settlement
`
`or termination for any reason” (Mot., 2) and that “Ford’s counsel will be present
`
`
`3 Or, for that matter, to not serve proposed exhibits. Compare, e.g., Johns
`
`Manville Corp. v. Knauf Insulation, Inc., IPR2015-01453, Papers 16, 35, 36
`
`(PTAB Mar. 14, Jun. 27, & Jul. 26, 2016) (Board had to rule on two subpoena
`
`requests because party served supplemental information, including testimony).
`
`8
`
`
`
`
`
`only to observe and to answer any questions pertaining specifically to Ford as the
`
`joining party, should any such questions arise.” Mot., 9. Ford vaguely suggests
`
`that it is “further willing to agree to any other reasonable conditions.” Mot., 10.
`
`But Ford has not limited itself, or Mercedes or Volkswagen, from presenting
`
`different arguments with respect to Ford’s separate witness, simply stating that
`
`“Ford will rely on its own expert’s declaration only if Volkswagen and Mercedes
`
`are not parties to this IPR.” Mot., 8 n. 2. Ford’s Motion therefore appears to leave
`
`open the possibility, absent Board direction to the contrary, that Ford will insert
`
`itself into the proceedings whenever it unilaterally determines any question raised
`
`to be one “pertaining to Ford,” to submit its own separate evidence whenever it
`
`unilaterally deems doing so to be appropriate, and to not follow any conditions on
`
`its participation that it unilaterally deems not reasonable.
`
`In other proceedings, the Board has granted joinder only on the condition
`
`that the joined petitioner use the witness declaration of the existing party, and
`
`indeed that, if it has filed a declaration, that the declaration be withdrawn.
`
`Compare, e.g., Mylan Pharms. Inc. v. Janssen Oncology, Inc., IPR2016-01332,
`
`Paper 21, 9-11 (Jan. 10, 2017) (denying joinder largely because of different
`
`experts); Argentum Pharma. LLC v. Janssen Oncology Inc., IPR2016-01317, Paper
`
`9, 9 (Sep. 19, 2016) (requiring joining petitioner to withdraw declaration of its
`
`expert and rely solely on declaration testimony of first petitioner’s expert); Sony,
`
`9
`
`
`
`
`
`IPR2013-00386, Paper 16, 7 (denying joinder because, inter alia, “Petitioners also
`
`include with their Petition a declaration from [a new expert declarant], which likely
`
`would increase the amount of discovery (e.g., depositions) that would be required
`
`if joinder is permitted.”) (citation omitted). Ford’s joinder request, if granted at all,
`
`should be granted only on, inter alia, this condition.
`
`As for Ford’s remaining exhibits (Ex. 1001 to Ex. 1034), they appear
`
`identical to exhibits Volkswagen has previously filed. The rules generally deny
`
`parties the right to the filing of duplicative exhibits without express Board
`
`authorization. See 37 C.F.R. § 42.6(d) (“A document already in the record of the
`
`proceeding must not be filed again, not even as an exhibit or an appendix, without
`
`express Board authorization.”). These exhibits, too, should not be part of the target
`
`proceeding.
`
`
`
`IV. CONCLUSION
`
`For the reasons given above, Patent Owner respectfully urges that joinder
`
`not be granted on the basis of Ford’s pledge of understudy status, in the absence of
`
`clarity as to what that status means, and Patent Owner respectfully submits that, if
`
`Ford’s petition is instituted, joinder should be granted only with the conditions
`
`described above.
`
`Respectfully submitted,
`
`____/ Kenneth Weatherwax /_________
`
`10
`
`
`
`
`
`Date: April 28, 2023
`
`
`
`
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
`
`11
`
`
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`
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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`on the date below and to the addresses listed below:
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION
`FOR JOINDER
`
`
`The names and address of the parties being served are as follows:
`
`Jonathan M. Strang
`Matthew J. Moore
`Ashley N. Finger
`
`Kumar Ravula
`
`
`
`
`
`
`
`
`
`
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`
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`
`
`Date: April 28, 2023
`
`
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`
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`
`
`jonathan.strang@lw.com
`matthew.moore@lw.com
`ashley.finger@lw.com
`surendrakumar.ravula@lw.com
`
`Respectfully submitted,
`
`____/ Robert Pistone /_________
`
`
`
`
`
`
`12
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`
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