`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`NEO WIRELESS, LLC
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 10,965,512
`
`IPR Case No.: 2023-00764
`
`
`______________
`
`
`
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF PETITIONER’S
`MOTION FOR JOINDER
`
`
`
`
`
`
`Case No.: IPR2023-00764
`Patent No.: 10,965,512
`
`
`Atty. Dkt. No.: FPGP0139IPR
`
`Subsequent to Neo Wireless, LLC’s (“Patent Owner”) Response to
`
`Petitioner’s Motion for Joinder (“Response”), the Board granted Institution in
`
`IPR2022-01539 (“Volkswagen IPR”) and IPR2023-00079 (“Mercedes IPR”). (See
`
`Volkswagen Group of America, Inc. v. Neo Wireless, LLC, No. IPR2022-01539,
`
`Paper 7 (P.T.A.B.); Mercedes-Benz USA, LLC, v. Neo Wireless, LLC, No. IPR2023-
`
`00079, Paper 11. (P.T.A.B.)). The Board also granted Mercedes’s motion for joinder
`
`with the Volkswagen IPR. (IPR2023-00079, Paper 11 at 14).
`
`In the Mercedes IPR, the Patent Owner did not oppose but instead sought
`
`multiple conditions1 on joinder. The Board rejected Patent Owner’s further conditions
`
`stating, “Patent Owner’s further conditions are not necessary.” (IPR2023-00079, Paper 11
`
`at 13).
`
`The Patent Owner seeks the same unnecessary conditions2 here. For the
`
`
`1 Patent Owner argued for the following conditions: 1) Mercedes should be denied
`
`any right to participate in the joined proceeding, 2) Mercedes’s exhibits, including
`
`its expert declaration, should be excluded from the record, and 3) if joinder is granted,
`
`Volkswagen should be shown to have accepted Mercedes’s role in the proceeding.
`
`2 Patent Owner seeks to require that 1) Ford should be denied any right to participate
`
`in the joined proceeding, and 2) Ford’s exhibits, including its expert declaration,
`
`should be excluded from the record.
`
`1
`
`
`
`Case No.: IPR2023-00764
`Patent No.: 10,965,512
`
`reasons herein and in Petitioner’s Motion for Joinder, Paper 3 (“Motion”), Petitioner’s
`
`Atty. Dkt. No.: FPGP0139IPR
`
`Motion should be granted, without imposing Patent’s Owner’s unnecessary
`
`conditions.
`
`First, the Response fails to appropriately consider Petitioner’s express
`
`statements that it, if joined, would take an inactive understudy role. (Motion at 2.)
`
`Petitioner being joined as an inactive understudy would not present any additional
`
`burden on the Patent Owner. As described in Petitioner’s Motion, the grounds
`
`presented here by Petitioner are the same as the grounds presented in the
`
`Volkswagen IPR, and Petitioner will have no substantive role in that proceeding
`
`unless the petitioner in the Volkswagen IPR (either Volkswagen or Mercedes) ceases
`
`its own participation. (Motion at 7–8 and 10.)
`
`Second, Patent Owner’s supposed “further conditions,” are essentially
`
`duplicative of the restrictions that Petitioner already proposes on its participation in
`
`the Volkswagen IPR and thus are unnecessary. Petitioner’s Motion makes clear that,
`
`if joined, it will not raise new grounds or introduce its own arguments or discovery
`
`and that it will not submit any filing unless the filing solely involves Petitioner.
`
`These restrictions are adequate to eliminate the chance of duplicative briefing and
`
`any additional burden in the Volkswagen IPR. See, e.g., Mercedes-Benz Grp. AG v.
`
`Arigna Tech. Ltd., No. IPR2022-00776, Paper 8 at 11 (P.T.A.B.).
`
`And although Patent Owner urges Petitioner be compelled to withdraw the
`
`2
`
`
`
`Case No.: IPR2023-00764
`Patent No.: 10,965,512
`
`declaration of Dr. Cooklev, that would be inappropriate and premature at this stage.
`
`Atty. Dkt. No.: FPGP0139IPR
`
`The cases relied upon by Patent Owner involve situations where joining petitioners
`
`sought to introduce expert declarations with new or additional arguments or
`
`otherwise did not agree to rely solely on the declaration of first petitioner’s expert and
`
`are inapplicable here. The Board regularly permits joinder of petitioners who relied
`
`on different declarants, when, as is the case here, the joining petitioner’s expert
`
`presents the same opinions as the earlier-filed IPR. See, e.g., Everlight Elecs. Co.,
`
`Ltd. v. Document Sec. Sys., Inc., No. IPR2018-01225, Paper 14, at 5-9 (P.T.A.B.
`
`Sept. 27, 2018); see also Pfizer Inc. v. Sanofi-Aventis Deutschland GmbH, No.
`
`IPR2019-00981, Paper 12, at 4 (P.T.A.B. Aug. 15, 2019); Microsoft Corp. v.
`
`Koninklijke Philips N.V., No. IPR2017-01754, Paper 16, at 6 (P.T.A.B. Nov. 29,
`
`2017); Qualcomm Inc. v. DSS Tech. Mgmt., Inc., No. IPR2016- 01314, Paper 8, at 2
`
`n.1, 3 (P.T.A.B. Aug. 29, 2016).
`
`As explained in the Motion, Ford agreed to rely entirely on, and be bound by,
`
`the declaration and deposition of Volkswagen’s (or Mercedes’s) expert declarant in
`
`the joined IPR, so long as Volkswagen (or Mercedes) remains a party until its expert
`
`is deposed. See Everlight Elecs., No. IPR2018-01225, Paper 14 at 6. And, if
`
`Volkswagen and Mercedes are not parties in the IPR, Petitioner will rely on Dr.
`
`Cooklev’s substantively identical declaration and the Patent Owner can depose Dr.
`
`Cooklev. (Motion at 11.) Joinder accordingly presents no risk of duplicative
`
`3
`
`
`
`Case No.: IPR2023-00764
`Patent No.: 10,965,512
`
`declarations, depositions, or other evidence.
`
`Atty. Dkt. No.: FPGP0139IPR
`
`Like Mercedes, Ford filed a copycat Petition and Expert Declaration and
`
`agreed to an understudy role in the Volkswagen IPR. Therefore, the Board should
`
`reject Patent Owner’s additional conditions for joinder for the same reasons as the
`
`Mercedes IPR and the reason presented above. For the foregoing reasons, and the
`
`reasons provided in Petitioner’s Motion, Petitioner respectfully requests inter partes
`
`review of U.S. Patent No. 10,965,512 and joinder with Volkswagen Group of
`
`America, Inc. v. Neo Wireless, LLC, No. IPR2022-01539.
`
`
`
`Dated: May 24, 2023
`
`
`
`
`
`By: / Jonathan M. Strang /
`
`Respectfully submitted,
`
`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
`
`
`
`
`
`
`4
`
`
`
`Atty. Dkt. No.: FPGP0139IPR
`
`John S. LeRoy (Reg. No. 48,158)
`Christopher Smith (Reg. No. 59,669)
`FPGP0141IPR@brookskushman.com
`Postal & Hand-Delivery Address:
`Brooks Kushman
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Telephone: 248.226.2754
`Fax: 248.358.3351
`
`
`Counsel for Petitioner Ford Motor
`Company
`
`Case No.: IPR2023-00764
`Patent No.: 10,965,512
`
`
`
`
`
`
`
`
`5
`
`
`
`Case No.: IPR2023-00764
`Patent No.: 10,965,512
`
`
`
`Atty. Dkt. No.: FPGP0139IPR
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 24th day of May, 2023,
`
`a true and correct copy of the foregoing Petitioner’s Reply in Support Petitioner’s
`
`Motion for Joinder was served by electronic mail on Patent Owner’s lead and
`
`back-up counsel at the following email addresses:
`
`Kenneth J. Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`1016 Pico Boulevard, Santa Monica, CA 90405
`Tel.: 310.307.4503
`Fax: 310.307.4509
`weatherwax@lowensteinweatherwax.com
`NeoWireless_IPRs@lowensteinweatherwax.com
`
`Hamad M. Hamad
`CALDWELL, CASSADY, & CURRY P.C.
`2121 N. Pearl St., Ste 1200
`Dallas, TX 75201
`Tel.: 214.888.4848
`Fax: 214.888.4849
`hhamad@caldwellcc.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: / Jonathan M. Strang /
`
`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
`
`Counsel for Petitioner Ford Motor
`Company
`
`
`
`
`
`
`
`
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
