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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL MOTORS LLC, NISSAN NORTH AMERICA, INC., TESLA, INC.,
`AND AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`____________
`
`Case IPR2023-00961
`Patent US 10,965,512 B2
`____________
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ......................................................................................... 1
`
`I.
`
`II. GM SHOULD NOT BE JOINED WITH ANY RIGHTS TO TAKE
`ACTIONS WITHOUT PRIOR BOARD AUTHORIZATION. ............... 4
`
`III. GM SHOULD BE PROHIBITED FROM OFFERING ITS OWN
`SEPARATE EVIDENCE. ...........................................................................10
`
`IV. CONCLUSION ............................................................................................13
`
`
`
`i
`
`
`
`
`
`AGENCY DECISIONS
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Argentum Pharma. LLC v. Janssen Oncology Inc., IPR2016-01317, Paper 9, 9
`(Sep. 19, 2016) ....................................................................................................12
`
`GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge I,
`IPR2017-00919, Paper 12 (June 9, 2017) ............................................................. 7
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01453, Papers 16, 35, 36 (PTAB Mar. 14, Jun. 27, & Jul. 26, 2016) .10
`
`MSN Labs. Private Ltd. v. Bausch Health Ireland Ltd.,
`IPR2023-00016, Paper 12 (Nov. 29, 2022) .......................................................... 3
`
`Mylan Pharms. Inc. v. Janssen Oncology, Inc.,
`IPR2016-01332, Paper 21 (Jan. 10, 2017) ..........................................................12
`
`Sony Corp. of Am. v. Network-1 Security Sols., Inc.,
`IPR2013-00386, Paper 16 (July 29, 2013) .....................................................1, 12
`
`Splunk Inc. v. Sable Networks, Inc.,
`IPR2022-00228, Paper 9 (Apr. 4, 2022) ...........................................................8, 9
`
`Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLC,
`IPR2021-00738, Paper 9 (June 14, 2021) ............................................................. 8
`
`REGULATIONS
`
`37 C.F.R. § 42.1(b) ..................................................................................................11
`
`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) ..................................................................................................13
`
`ii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner Neo Wireless, LLC hereby responds to Petitioners General
`
`Motors LLC, Nissan North America, Inc., Tesla, Inc., and American Honda Motor
`
`Co., Inc.’s, (collectively “GM’s”) Motion For Joinder (Paper 2, “Mot.”), which
`
`requests joinder of this IPR with IPR2022-01539 filed by Volkswagen Group of
`
`America, Inc. (“Volkswagen”). This response 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, GM has the burden
`
`to establish entitlement to relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`
`If the Board decides to grant joinder, it should only be granted with
`
`additional conditions limiting GM’s participation as joined understudy petitioner,
`
`such as those the Board has imposed in other cases,1 to reduce the inarguable
`
`
`1 Patent Owner respectfully disagrees with the decision to grant joinder without
`
`formally imposing such conditions in IPR2023-00079, Paper 11 (May 5, 2023),
`
`which already granted a motion for joinder to IPR2022-01539. Patent Owner notes
`
`that multiplying grants of joinder increase the likelihood of resulting cost and
`
`delay. See, e.g., Am. Honda Motor Co. v. Intellectual Ventures II LLC, IPR2018-
`
`1
`
`
`
`
`
`burden the requested joinder will create in these speedy proceedings. GM
`
`concedes that measures limiting its joined participation are appropriate, and pre-
`
`emptively “agrees” to several such limits. Mot., 2, 7-9. The Board should,
`
`however, grant joinder, if at all, only with further limits.
`
`GM has said it “will act as an ‘understudy’” until the target IPR petitioner is
`
`no longer a party in the proceeding. Mot., 1-2. But what does this mean? The
`
`Board has stated that “an ‘understudy role’ means that [the petitioner seeking
`
`joinder] would not make any substantive filings,” 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
`
`
`00348, Paper 10, 20 (June 27, 2018) (denying institution and joinder where, inter
`
`alia, “multiple, staggered petition filings,” including those requesting joinder,
`
`“each challenging the same claims of the same patent, . . . results in some
`
`inefficiency for the Board”). The multiplying requests for joinder by multiple
`
`additional petitioners is a further reason such conditions should be imposed.
`
`2
`
`
`
`
`
`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 GM 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.
`
`At the very least, Patent Owner respectfully submits that the Board should
`
`grant joinder only on the further conditions:
`
`(1) That GM 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 GM’s exhibits, including its separate expert declaration (Ex. 1035),
`
`not be added to the record of this case, and that GM 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.
`
`3
`
`
`
`
`
`II. GM 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 GM’s joinder request only if GM is given no right thereby to
`
`participate, as a joined party, without express prior Board authorization.
`
`GM pledges that if joined it will submit no separate arguments—essentially,
`
`to act as an understudy to Volkswagen—if joinder is granted. Mot., 7-9. There is
`
`no apparent reason why GM, as a 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 GM has agreed to let
`
`Volkswagen “maintain the lead” (Mot., 2), GM has not promised not to submit its
`
`own separate evidence, only stating that it “will not seek additional depositions or
`
`deposition time,” (Mot., 2) giving itself multiple potential carve-outs wherein it
`
`might potentially deem itself permitted to submit evidence or briefing when an
`
`issue “solely involv[es] Petitioners” or when motions “do not affect the VW IPR
`
`Petitioner, or its respective position.” Mot., 8. (Indeed, GM has already submitted
`
`its own separate evidence, including separate witness testimony, and, if joinder
`
`were granted, may continue to separately proffer still more.)
`
`While GM has proposed numerous conditions ostensibly limiting its
`
`participation in the target proceedings, they would present potential loopholes that
`
`4
`
`
`
`
`
`may not limit GM to a silent understudy role. In its Motion for Joinder, GM offers
`
`the following conditions:
`
`a. Petitioners shall not make any substantive filing and shall be bound
`
`by the filings of the VW IPR Petitioner, unless a filing concerns
`
`termination and settlement, or issues solely involving Petitioners;
`
`b. Petitioners shall not present any argument or make any presentation
`
`at oral hearing unless an issue solely involves Petitioners, or when
`
`addressing Board-approved motions that do not affect the VW IPR
`
`Petitioner, or its respective position;
`
`c. Petitioners shall not seek to cross-examine or defend the cross-
`
`examination of any witness, unless the topic of cross-examination
`
`concerns issues solely involving Petitioners;
`
`d. Petitioners shall not seek discovery from Patent Owner on issues not
`
`solely involving Petitioners;
`
`e. Petitioners will not rely on expert testimony beyond that submitted
`
`by the VW IPR Petitioner unless the VW IPR Petitioner is
`
`terminated from the case prior to any necessary depositions. If the
`
`VW IPR Petitioner is not terminated from the case prior to any
`
`necessary depositions, Petitioners agree to rely entirely on, and be
`
`bound by, the expert declarations and depositions in the VW IPR.
`
`Petitioners’ expert declaration of Dr. Matthew C. Valenti is
`
`substantively identical to the declaration filed in the VW IPR
`
`petition. See, e.g., Noven Pharm., Inc. v. Novartis AG, IPR2014-
`
`00550, Paper 38 at 5 (PTAB April 10, 2015). Unless and until the
`
`current petitioner in IPR2023-01539 ceases to participate in the
`
`instituted VW IPR, Petitioners will not assume an active role.
`
`5
`
`
`
`
`
`Mot., 7-9.
`
`The restrictions on GM’s involvement in the Volkswagen IPR, as laid out in
`
`GM’s proposed conditions, should be augmented. For example, as seen above,
`
`GM purports to agree to limit its ability to make substantive filings, but then
`
`immediately states that the limitation does not extend to “a filing concern[ing]
`
`termination and settlement, or issues solely involving Petitioners.” Mot., 8. Each
`
`of GM’s conditions has a carve-out of some degree permitting the petitioners to
`
`directly involve themselves in the Volkswagen IPR, in a manner inconsistent with
`
`being a “silent understudy.” GM also fails to offer clarity as to what it understands
`
`that a “necessary” deposition would be, which, in the event of dismissal of
`
`Volkswagen, would permit GM to claim a deposition is still “necessary” and
`
`introduce its own expert. Id., 8-9. Not all of the conditional carve-outs only apply
`
`when GM is addressed in the IPR in some manner, as GM also tries to allow itself
`
`to seek discovery from Patent Owner on issues “solely involving Petitioners.” Id.,
`
`8. In short, GM is dressing itself up as a silent understudy, but effectively seeks
`
`permission to be a potentially participating party in the Volkswagen IPR. This
`
`type of involvement should not be permitted absent obtaining of advance Board
`
`approval of all participation.
`
`In similar factual circumstances in past proceedings, where joinder has not
`
`been denied altogether, the Board has addressed the concerns above in a simple
`
`6
`
`
`
`
`
`and efficient manner, by imposing just such restrictions on joinder petitions—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.
`
`For example, in GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge I,
`
`IPR2017-00919, the petitioner seeking joinder made promises essentially similar to
`
`GM’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 the prior 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.
`
`
`2 All emphasis is added unless stated otherwise.
`
`7
`
`
`
`
`
`For another example, in Taiwan Semiconductor Manufacturing Co. Ltd. v.
`
`Arbor Global Strategies LLC, IPR2021-00738, the petitioner seeking joinder stated
`
`that 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
`
`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
`
`8
`
`
`
`
`
`[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
`
`“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 GM here as well.
`
`GM has no more justification to a greater right to participate in this case than
`
`the petitioners in GlobalFoundries, Taiwan Semiconductor, Splunk, and MSN
`
`Laboratories. If joinder were to be granted here, the same simple, efficient
`
`condition requiring Board authorization for any involvement should be imposed.
`
`The Board should not grant GM joinder except if GM 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.
`
`9
`
`
`
`
`
`III. GM SHOULD BE PROHIBITED FROM OFFERING ITS OWN
`SEPARATE EVIDENCE.
`
`Aside from other restrictions the Board places on GM, if its joinder request
`
`to Volkswagen’s case is granted, then GM’s exhibits in this case, including its
`
`separate witness declaration, should not become exhibits in Volkswagen’s case,
`
`and GM should be granted no right to file any exhibits in the joined case.
`
`GM pledges that if joined, it will refrain from certain independent action,
`
`including that it will “not assume an active role” and that it “will not seek
`
`additional depositions or deposition time.” Mot., 2. However, GM does not agree
`
`to not file separate exhibits3 nor does it explicitly agree not to file briefing, simply
`
`stating that “[t]hese limitations will avoid … duplicative briefing” (id.), while at
`
`the same time giving itself multiple carve-outs wherein it can file briefing or
`
`advance arguments. Mot., 2, 7-9; see supra § II. Indeed, GM has already begun to
`
`file separate exhibits, including an expert declaration signed by Dr. Matthew
`
`Valenti, whose testimony does not appear as an exhibit in the Volkswagen IPR.
`
`Ex. 1035.
`
`
`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).
`
`10
`
`
`
`
`
`Allowing GM to potentially add its own separate, different evidence, such as
`
`Mr. Valenti’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). GM’s
`
`separately filed exhibits, including the Valenti declaration, should be required to be
`
`withdrawn and should not become part of the record of the joined proceedings.
`
`To be sure, GM does not even agree to proceed solely on the grounds,
`
`evidence, and arguments advanced in the Volkswagen IPR if it is instituted, instead
`
`attempting to carve out multiple situations in which GM should be permitted to
`
`present arguments, file briefing, seek discovery, and cross-examine witnesses.
`
`Mot., 7-9. Furthermore, GM has not limited itself, or Volkswagen, from
`
`presenting different arguments with respect to GM’s separate witness (Dr.
`
`Valenti), unilaterally stating that he “will not [be] rel[ied] on” by Petitioners
`
`“beyond that submitted by the VW IPR Petitioner unless the VW IPR Petitioner is
`
`terminated from the case prior to any necessary depositions.” Id., 9. GM does not
`
`state that Volkswagen has similarly agreed not to rely on, or take the deposition of,
`
`Dr. Valenti, and indeed seems to phrase the condition to permit his involvement
`
`through Volkswagen. GM’s Motion therefore appears to leave open the
`
`possibility, absent Board direction to the contrary, that GM will seek to insert itself
`
`into the proceedings whenever it unilaterally determines any question is “solely
`
`11
`
`
`
`
`
`involv[ing] Petitioners” or “do not affect the VW IPR Petitioner,” 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. Id., 8.
`
`In other proceedings, the Board has granted joinder only on the simple,
`
`efficient 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 (Sep. 19, 2016) (requiring joining petitioner to withdraw
`
`declaration of its expert and rely solely on declaration testimony of first
`
`petitioner’s expert); Sony, 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).
`
`GM’s joinder request, if granted at all, should be granted only on, inter alia, this
`
`condition.
`
`As for GM’s remaining exhibits (Ex. 1001 to Ex. 1032), they appear
`
`identical to exhibits Volkswagen has previously filed. The rules generally deny
`
`12
`
`
`
`
`
`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 GM’s pledge of understudy status, in the absence of
`
`clarity as to what that status means, and Patent Owner respectfully submits that, if
`
`GM’s petition is instituted, joinder should be granted only with the simple, tested,
`
`and efficient conditions described above.
`
`Date: July 3, 2023
`
`
`
`Respectfully submitted,
`
`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
`
`13
`
`
`
`
`
`
`
`
`
`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:
`
`Timothy W. Riffe
`Usman A. Khan
`
`John T. Johnson
`Jeffrey C. Mok
`Reginald J. Hill
`Nicole A Keenan
`
`
`
`
`
`
`
`
`
`
`IPR18768-0206IP1@fr.com
`PTABInbound@fr.com
`
`rhill@jenner.com
`nkeenan@jenner.com
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`____/ Robert Pistone /_________
`
`
`
`
`
`
`
`
`
`Date: July 3, 2023
`
`
`
`
`
`14
`
`
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