UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
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`v.
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`NEO WIRELESS, LLC,
`Patent Owner.
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`IPR2023-00791
`Patent No. 10,075,941
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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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`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
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`v.
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`NEO WIRELESS, LLC,
`Patent Owner.
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`IPR2023-00791
`Patent No. 10,075,941
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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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`I.
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`STATEMENT OF PRECISE RELIEF REQUESTED
`American Honda Motor Co., Inc. (“Honda”) respectfully submits this Motion
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`for Joinder, concurrently with a Petition (“Honda Petition”) for inter partes review
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`of U.S. Patent No. 10,075,941 (“the ‘941 Patent”).
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` Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b), Honda
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`requests institution of an inter partes review and joinder with IPR2022-01537
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`(Volkswagen Group of America, Inc. v. Neo Wireless LLC “Volkswagen IPR”),
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`institution expected by May 15, 2023. Honda’s petition is substantively the same as
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`the Volkswagen IPR petition. It challenges the same claims, on the same grounds,
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`and relies on the same prior art as the Volkswagen IPR and therefore would create
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`no additional burden for the Board, the Volkswagen IPR Petitioner, or Patent Owner
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`if joined. Joinder would therefore lead to an efficient resolution of the validity of
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`the ‘941 patent.
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`Honda is currently named as a defendant in Neo Wireless, LLC v. American
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`Honda Motor Co., Inc., et al. in the Southern District of Ohio, Civil Action No. 2:22-
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`cv-11403 (S.D. Ohio) (now centralized in a multidistrict litigation in the Eastern
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`District of Michigan, In re Neo Wireless, LLC Patent Litigation, Civil Action No.
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`2:22-md-03034 (E.D. Mich.). Honda has been accused of infringing the ‘941 patent.
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`Honda has not previously filed a petition for IPR challenging the validity of the ‘941
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`patent.
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`1
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`Honda stipulates that if joinder is granted, it will act as an “understudy” and
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`will not assume an active role unless the Volkswagen IPR Petitioner ceases to
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`participate in the proceeding. The Volkswagen IPR Petitioner will maintain the lead
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`role in the proceeding so long as it remains in the proceeding. These limitations will
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`avoid lengthy and duplicative briefing. Honda also will not seek additional
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`depositions or deposition time. Joinder will not impact the trial schedule because it
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`has not yet been instituted.
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`In fact, joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Volkswagen
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`IPR for all interested parties.
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`Joinder will not unduly prejudice any party. Because joinder will not add any
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`new substantive issues, delay the schedule, burden deponents, or needlessly increase
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`filings, any additional costs on Patent Owner will be minimal. On the other hand,
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`denial of joinder would prejudice Honda. Honda’s interests may not be adequately
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`protected in the Volkswagen IPR, particularly if the Volkswagen IPR Petitioner
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`settles with Patent Owner and ceases to participate. Honda should be allowed to join
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`in a proceeding affecting a patent asserted against it.
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`Given the similarities of the proceedings, the lack of undue prejudice to Patent
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`Owner, and the potential benefit to the public and to the Board that would accrue by
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`Honda’s cooperative participation in the Volkswagen IPR in the event that the
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`2
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`Volkswagen IPR Petitioner’s participation terminates, the Board should institute
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`IPR and grant Honda’s Motion for Joinder.
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`II. ARGUMENT
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`A. Legal Standards and Applicable Rules
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`A petitioner may request joinder, without prior authorization, up to one
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`month after the institution date of the proceeding to which joinder is requested. 37
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`C.F.R. § 42.122(b); Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-
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`00781 and IPR2014-00782, Paper 5 at 3 (PTAB May 29, 2014).
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`The Board has discretion to grant a motion for joinder of a petitioner for
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`inter partes review to another inter partes review proceeding. See 35 U.S.C. §
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`315(c). In determining whether to exercise its discretion to grant a motion for
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`joinder, the Board considers: (1) reasons why joinder is appropriate; (2) any new
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`grounds of unpatentability asserted in the petition; (3) what impact (if any) joinder
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`would 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 3 (July 29, 2013).
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`B. Honda’s Motion for Joinder is Timely
`Joinder may be requested “no later than one month after the institution date
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`of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
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`The Volkswagen IPR is expected to be instituted on or before May 15,
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`3
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`2023. IPR2022-01537. Honda’s current motion is timely as it is being filed prior
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`to institution.
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`C. The Four Factors Favor Joinder
`Each of the four factors weighs in favor of granting Honda’s Motion for
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`Joinder. Honda’s Petition is substantively identical to the petition in the
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`Volkswagen IPR; it presents no new grounds of unpatentability. Joinder will have
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`no impact on the pending schedule of the Volkswagen IPR. Moreover, the briefing
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`and discovery will be simplified by resolving all issues in a single proceeding.
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`1.
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`Joinder of Honda Is Appropriate Because It Will Promote
`an Efficient Determination of the Validity of the ‘941
`Patent Without Prejudice to Any Party
`Honda seeks to join the Volkswagen IPR in order to ensure that an accused
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`infringer with an active interest in the proceeding remains a party to this IPR if the
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`Volkswagen IPR Petitioner’s participation is terminated prior to completion.
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`Thus, joining Honda to the Volkswagen IPR is the most practical way to secure the
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`just, speedy, and inexpensive resolution of the challenge to the ‘941 patent. See
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`37 C.F.R. § 42.1(b).
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`If Honda is joined as a party, the validity of the grounds raised in the
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`Volkswagen IPR can be determined in a single proceeding. Joinder is also
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`appropriate because Honda’s petition challenges the validity of the same claims of
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`the ‘941 patent on identical grounds to those in the Volkswagen IPR. There are
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`4
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`no substantive differences between Honda’s and the Volkswagen IPR Petitioner’s
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`Petition, IPR2022-01537, Paper 1 (September 15, 2022). Honda also relies on
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`substantially the same supporting evidence in its Petition as is relied on in the
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`Volkswagen IPR.1 A consolidated proceeding, including Honda and the
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`Volkswagen IPR Petitioner, will therefore be more efficient and less wasteful, as
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`only a single trial on these common grounds would be required. See, e.g., Oracle
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`America Inc. v. Realtime Data LLC, IPR2016-01672, Paper 13 at 7 (PTAB Mar.
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`7, 2017) (noting that “joining Oracle’s identical challenges to those in the 1002
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`IPR will lead to greater efficiency while reducing the resources necessary from
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`both Realtime and the Board”). The Board “routinely grants motions for joinder
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`where the party seeking joinder introduces identical arguments and the same
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`grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon
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`1 The supporting expert declaration of Dr. R. Michael Buehrer submitted by Honda
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`agrees with the facts, analysis, and conclusions of the expert declaration in the
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`Volkswagen IPR. The declaration of Dr. Buehrer does not contain any new
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`opinions not included in the Volkswagen IPR expert declaration. See Everlight
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`Elecs. Co., v. Document Security Sys., Inc., IPR2018-01260, Paper No. 12 at 6-7
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`(Nov. 14, 2018) (granting motion for joinder where petitioner submitted separate
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`but substantially identical expert declaration).
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`5
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`Co., IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016) (internal quotations and
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`citations omitted).
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`Joining Honda as a party to the Volkswagen IPR would promote the public
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`interest relating to the unpatentability of the ‘941 patent and not cause any undue
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`prejudice to Patent Owner or the Volkswagen IPR Petitioner. The Patent Owner
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`must respond to the common invalidity grounds identified in the Volkswagen and
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`Honda’s Petitions regardless of joinder.
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`2.
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`Honda’s Petition Does Not Raise Any New Grounds of
`Unpatentability and Therefore Does Not Add Additional
`Complexity to the Grounds in the Volkswagen IPR
`Petitioner’s Petition
`Honda’s Petition challenges the validity of the ‘941 patent on identical
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`grounds to those in the Volkswagen IPR. See IPR2022-01537, Paper 1 (September
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`15, 2022). Honda’s supporting materials―including its supporting expert
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`declaration, exhibits, and exhibit numbering―are substantially identical to those
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`presented in the Volkswagen IPR. See supra n.2. While Honda uses its own
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`expert declarant, the expert’s declaration agrees with the facts, analysis, and
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`conclusions of the expert declaration in the Volkswagen IPR and does not contain
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`any new opinions not included in the Volkswagen IPR expert declaration. See
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`Everlight Elecs. Co., v. Document Security Sys., Inc., IPR2018- 01260, Paper No.
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`12 at 6-7 (Nov. 14, 2018) (granting motion for joinder where petitioner submitted
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`separate but substantially identical expert declaration). Further, unity of exhibits
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`6
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`and exhibit numbering with the Volkswagen IPR has been maintained.
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`Accordingly, no new grounds are being introduced. See Sony Corp. v. Memory
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`Integrity, LLC., IPR2015-01353, Paper No. 11 at 5-6 (PTAB Oct. 5, 2015).
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`Therefore, consolidation of this proceeding with Volkswagen’s via joinder
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`of Honda’s Petition will not raise any new issues of unpatentability and will not
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`impose any additional burden on the Board or Patent Owner, or add additional
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`complexity to the case.
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`3.
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`Joinder Will Not Affect the Schedule in the Volkswagen
`IPR
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`Given that the Board has not yet instituted the Volkswagen IPR, joinder of
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`Honda would not affect the schedule in any potential forthcoming trial. Honda’s
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`participation should result in no changes to the schedule.
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`Honda agrees to adhere to all applicable deadlines set forth in the
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`Volkswagen IPR Scheduling Order.
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`4.
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`Joinder Will Simplify Briefing Because Honda Has Agreed
`to Consolidated Filings and an Understudy Role if the
`Volkswagen Petitioner Remains
`To further prevent joinder from imposing any burden on the Volkswagen
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`IPR Petitioner, Patent Owner, or the Board and to further ensure that there are no
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`changes in the potential trial schedule, Honda has agreed, as long as the
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`Volkswagen IPR Petitioner remains a party to the Volkswagen IPR, to take an
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`understudy role, which will simplify briefing and discovery. In this role, Honda
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`7
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
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`agrees to the following conditions:
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`(a) Honda shall not make any substantive filing and shall be bound by
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`the filings of the Volkswagen IPR Petitioner, unless a filing concerns termination
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`and settlement, or issues solely involving Honda;
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`(b) Honda shall not present any argument or make any presentation at
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`oral hearing unless an issue solely involves Honda, or when addressing Board-
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`approved motions that do not affect the Volkswagen IPR Petitioner, or its
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`respective position;
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`(c) Honda shall not seek to cross-examine or defend the cross-
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`examination of any witness, unless the topic of cross-examination concerns issues
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`solely involving Honda;
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`(d) Honda shall not seek discovery from Patent Owner on issues not
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`solely involving Honda;
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`(e) Honda will not rely on expert testimony beyond that submitted by the
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`Volkswagen IPR Petitioner unless the Volkswagen IPR Petitioner is terminated
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`from the case prior to any necessary depositions. If the Volkswagen IPR Petitioner
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`is not terminated from the case prior to any necessary depositions, Honda agrees to
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`rely entirely on, and be bound by, the expert declarations and depositions in the
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`Volkswagen IPR. Honda’s expert declaration of Dr. Buehrer is substantially
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`identical to the Wilson declaration filed by the Volkswagen IPR Petitioner. Dr.
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`8
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`Buehrer would not be relied on if the Volkswagen IPR Petitioner continues to
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`participate in the Volkswagen IPR. See, e.g., Noven Pharm., Inc. v. Novartis AG,
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`IPR2014-00550, Paper 38 at 5 (PTAB April 10, 2015). Unless and until the current
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`petitioner in IPR2022-01537 ceases to participate in the instituted Volkswagen
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`IPR, Honda will not assume an active role.2
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`Accordingly, due to Honda taking only an “understudy” role, Patent Owner
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`and the Volkswagen IPR Petitioner will only need to respond to one principal set
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`of papers, will not require additional time to address additional arguments, and can
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`thus proceed with the existing trial schedule. These steps will minimize or
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`eliminate any potential complications or delay that could potentially result from
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`joinder. See Sony, Paper No. 11 at 6-7 (granting motion because “joinder would
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`increase efficiency by eliminating duplicative filings and discovery, and would
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`reduce costs and burdens on the parties as well as the Board” where second
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`petitioner agreed to “understudy” role). Honda will also abide by any additional
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`conditions the Board deems appropriate for an “understudy” role.
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`5.
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`Joinder Will Result in No Prejudice to Patent Owner
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`2 For clarity, should the Volkswagen IPR Petitioner’s participation in the
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`Volkswagen IPR terminate, Honda would take over primary responsibility for
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`subsequent filings and discovery.
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`9
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`As noted above, Honda’s joining of the Volkswagen IPR proceeding should
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`not result in any prejudice to Patent Owner. No additional grounds or arguments
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`are being introduced, no new evidence or issues are being added, and no additional
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`discovery or briefing or oral argument should be necessary as a result of Honda’s
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`joinder. Thus, Patent Owner would not need to expend any additional resources
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`beyond those required in the current Volkswagen IPR.
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`III.
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`INSTITUTION IS APPROPRIATE UNDER GENERAL PLASTIC
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`General Plastic does not apply here because Honda has not previously
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`challenged the ‘941 patent and seeks to join the Volkswagen IPR in an understudy
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`role. See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
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`IPR2016-01357, Paper 19 at 15-19 (PTAB Sept. 6, 2017); Apple Inc. v. Uniloc
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`2017 LLC, IPR2020-00224, Paper 10 at 4-5 (PTAB Apr. 6, 2020).
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`Factor 1: Under General Plastic, factor 1 considers “whether the same
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`petitioner previously filed a petition directed to the same claims of the same
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`patent.” General Plastic at 16. Here, Honda has not previously filed a petition
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`against the ‘941 patent.
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`Honda and the Volkswagen IPR Petitioner are separate, unrelated
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`petitioners, and are not similarly situated for purposes of Factor 1. This factor
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`weighs in favor of institution and against discretionary denial.
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`Factors 2, 4 and 5: As to the timing examined in these factors, Honda did
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`10
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`not previously file a first petition prior to its current petition, and while Honda
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`became aware of the prior art references in the Volkswagen IPR, it made no serial
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`attack on the ‘941 patent and has filed this petition for IPR prior to institution.
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`These factors weigh in favor of institution and against discretionary denial.
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`Factor 3: As Honda did not previously file a first petition this factor weighs
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`in favor of institution and against discretionary denial.
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`Factors 6 and 7: As stated above, Honda seeks to join the Volkswagen IPR
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`and is not raising arguments beyond those raised by the Volkswagen petition.
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`These factors thus weigh in favor of institution, as there should be no material
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`impact on the Board’s finite resources or its ability to issue a final determination
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`on the Volkswagen petition within one year.
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`IV. CONCLUSION
`For the foregoing reasons, Honda respectfully requests that its Petition for
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`Inter partes review of the ‘941 Patent be instituted and that Honda be joined to the
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`Volkswagen IPR proceeding IPR2022-01537.
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`11
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
`Respectfully submitted,
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`/Thomas A. Rozylowicz/
`Thomas A. Rozylowicz, Reg. No. 50,620
`John T. Johnson, Reg. No. 37,363
`Jeffrey C. Mok, Reg. No. 69,878
`Won Yoon, Reg. No. 71,058
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Dated March 30, 2023
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`12
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`Proceeding No. IPR2023-00791
`Attorney Docket No: 15625-0037IP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on March 30,
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`2023, a complete and entire copy of this Petitioner’s Motion for Joinder was
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`provided by Federal Express, to the Patent Owner, by serving the correspondence
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`address of record as follows:
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`VOLPE KOENIG
`30 SOUTH 17TH STREET, 18TH FLOOR
`PHILADELPHIA, PA 19103
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`/Kristyn Waldhauser/
`Kristyn Waldhauser
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 638-5731
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