`
`
`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 10,965,512
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, AND § 42.122(b)
`
`
`
`Proceeding No.: IPR2023-00961
`Attorney Docket: 18768-0206IP1
`
`I.
`
`INTRODUCTION
`General Motors LLC, Nissan North America, Inc., Tesla, Inc., and
`
`American Honda Motor Co., Inc. (collectively “Petitioner”) hereby respond to
`
`Patent Owner’s Response (Paper 7, “Resp.”) to Petitioner’s Motion for Joinder
`
`(Paper 2, “Mot.”) that requests joinder with IPR2022-01539 (Volkswagen Group
`
`of America, Inc. v. Neo Wireless LLC (“Volkswagen IPR”)). This reply is timely
`
`under 37 C.F.R. § 42.25(a)(2).
`
`On May 2, 2023, the Board instituted the Volkswagen IPR petition on all
`
`grounds. Volkswagen IPR, Paper 7. Petitioner’s petition is substantively the
`
`same as the instituted Volkswagen IPR petition. Petitioner’s petition challenges
`
`the same claims, on the same grounds, and relies on the same prior art as the
`
`Volkswagen IPR. Furthermore, Petitioner has stipulated that if joinder is granted,
`
`it will act as an “understudy” and will not assume an active role unless the
`
`Volkswagen IPR Petitioner ceases to participate in the proceeding. Mot., 1-2.
`
`Petitioner has also agreed to abide by numerous conditions for the “understudy”
`
`role. Mot., 7-9 (Petitioner’s stipulated conditions (a)-(e)).
`
`In response, Patent Owner argues that Petitioner’s stipulated conditions
`
`“are insufficient” and that the Board should only grant joinder with the following
`
`additional conditions: (1) that Petitioner 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
`- 1 -
`
`
`
`
`Proceeding No.: IPR2023-00961
`Attorney Docket: 18768-0206IP1
`authorization from the Board; and (2) that Petitioner’s exhibits, including its
`
`separate expert declaration (Ex. 1035), not be added to the record of this case, and
`
`that Petitioner has no right as understudy petitioner to submit any separate
`
`exhibits or other materials. Resp., 2-3. Patent Owner further demands that
`
`“[Petitioner]’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.” Resp., 11.
`
`Patent Owner’s additional condition (1) is unnecessary because Petitioner’s
`
`stipulated conditions are consistent with the Board’s practice.
`
`Patent Owner’s additional condition (2) is contrary to the Board’s practice.
`
`Contrary to Patent Owner’s assertions, the Board routinely grants joinder without
`
`requiring the joined petitioner to withdraw its exhibits in cases where the joined
`
`petitioner’s supporting materials are substantially identical to those in the existing
`
`proceeding.
`
`II.
`
`PETITIONER’S PROPOSAL IS CONSISTENT WITH THE BOARD’S
`PRACTICE
`Patent Owner’s additional condition (1) that Petitioner should have “no
`
`right to file papers, engage in discovery, or participate in depositions and oral
`
`argument without first obtaining authorization from the Board” is unnecessary
`
`because Petitioner’s stipulated conditions (Mot., 7-9) already limit Petitioner’s
`
`participation in a manner consistent with the Board’s practice by limiting
`
`
`
`- 2 -
`
`
`
`Proceeding No.: IPR2023-00961
`Attorney Docket: 18768-0206IP1
`additional discovery, briefing, and oral argument. See Sony Corp. v. Memory
`
`Integrity, LLC, IPR2015-01353, Paper No. 11 at 6-7 (PTAB Oct. 5, 2015)
`
`(granting motion because “joinder would increase efficiency”).
`
`The Board routinely grants motions for joinder where petitioner agrees to
`
`participate as Petitioner proposes here. See, e.g., Advanced Micro Devices, Inc. et
`
`al. v. Monterey Research, LLC, IPR2021-00776, Paper No. 13 at 22 (PTAB Oct.
`
`13, 2021); Taiwan Semiconductor Manufacturing Co., Ltd. v. Arbor Global
`
`Strategies, LLC, IPR2021-00736, Paper No. 9 at 8 (PTAB Jun. 11, 2021).
`
`III. PETITIONER SHOULD NOT BE REQUIRED TO WITHDRAW ITS
`EXHIBITS
`Patent Owner’s additional condition (2) that “[Petitioner]’s separately filed
`
`exhibits, including the Valenti declaration, should be required to be withdrawn”
`
`and that “[Petitioner] have no right as understudy petitioner to submit any
`
`separate exhibits or other materials” is inconsistent with the Board’s practice.
`
`Contrary to Patent Owner’s assertions, the Board routinely grants joinder
`
`without requiring the joined petitioner to withdraw its exhibits when substantially
`
`the same evidence was filed as in the existing proceeding. See, e.g., Everlight
`
`Elecs. Co., v. Document Security Sys., Inc., IPR2018- 01260, Paper No. 12 at 6-7
`
`(PTAB Nov. 14, 2018) (granting motion for joinder where petitioner submitted
`
`separate but substantially identical expert declaration); Splunk Inc. v. Sable
`
`Networks, Inc., IPR2022-00228, Paper 9, 8 (PTAB Apr. 4, 2022) (denying Patent
`
`
`
`- 3 -
`
`
`
`Proceeding No.: IPR2023-00961
`Attorney Docket: 18768-0206IP1
`Owner’s request that petitioner should be required to withdraw its exhibits from
`
`the proceeding).
`
`Furthermore, contrary to Patent Owner’s demand, the Board routinely
`
`permits a joining party to submit separate filings in a limited “understudy” role.
`
`See, e.g., MSN Labs. Private Ltd. v. Bausch Health Ireland Ltd., IPR2023-00016,
`
`Paper 12, 3-4 (PTAB Nov. 29, 2022); Sony (IPR2015-01353), Paper No. 11 at 5-6
`
`(permitting a joining party to submit a separate filing).
`
`Patent Owner asserts that “[i]n 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.” (Resp. 12). However, the facts in
`
`the Patent Owner’s cited proceedings are not consistent with the facts in this
`
`proceeding.
`
`In Mylan, the Board denied joinder because “the date for the oral hearing is
`
`only a few weeks away” without “a practical way to accommodate the additional
`
`discovery.” See Mylan Pharms. Inc. v. Janssen Oncology, Inc., IPR2016-01332,
`
`Paper 21, 11 (PTAB Jan. 10, 2017).
`
`In Argentum, the joining party preemptively offered, as a condition in its
`
`Motion for Joinder, to “withdraw the declaration of its expert” if the existing party
`
`allows the joining party “to retain the same expert.” See Argentum Pharma. LLC
`
`v. Janssen Oncology Inc., IPR2016-01317, Paper 9, 5-6 (PTAB Sep. 19, 2016).
`- 4 -
`
`
`
`
`
`Proceeding No.: IPR2023-00961
`Attorney Docket: 18768-0206IP1
`In Sony (IPR2013-00386), the Board denied joinder because the joining
`
`party sought to “challenge new claims with new grounds.” See Sony Corp. of Am.
`
`v. Network-1 Security Sols., Inc., IPR2013-00386, Paper 16, 7 (PTAB Jul. 29,
`
`2013).
`
`By contrast, in this proceeding, Petitioner’s supporting
`
`materials―including its supporting expert declaration, exhibits, and exhibit
`
`numbering―are substantially identical to those presented in the Volkswagen IPR.
`
`While Petitioner uses its own expert declarant, the expert’s declaration agrees
`
`with the facts, analysis, and conclusions of the expert declaration in the
`
`Volkswagen IPR and does not contain any new opinions not included in the
`
`Volkswagen IPR expert declaration. See Everlight, Paper No. 12 at 6-7 (granting
`
`motion for joinder where petitioner submitted separate but substantially identical
`
`expert declaration). Further, unity of exhibits and exhibit numbering with the
`
`Volkswagen IPR has been maintained. See Splunk, Paper 9, 8 (denying Patent
`
`Owner’s request that petitioner should be required to withdraw its exhibits from
`
`the proceeding because the exhibits “were not previously of record this
`
`proceeding, and we discern no justification for their removal from it”).
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
`
`inter partes review of the ’512 Patent be instituted and that Petitioner be joined to the
`
`Volkswagen IPR proceeding IPR2022-01539.
`- 5 -
`
`
`
`
`
`
`Dated: August 3, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Proceeding No.: IPR2023-00961
`Attorney Docket: 18768-0206IP1
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Timothy W. Riffe/
`Timothy W. Riffe, Reg. No. 43,881
`Usman A. Khan, Reg. No. 70,439
`John T. Johnson, Reg. No. 37,363
`Jeffrey C. Mok, Reg. No. 69,878
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Reginald J. Hill, Reg. No. 39,225
`Nicole A. Keenan, Reg. No. 48,622
`JENNER & BLOCK LLP
`353 N. Clark Street
`Chicago, IL 60654
`Phone: (312) 923-2606
`Fax: (312) 527-0484
`
`Attorneys for Petitioner
`
`- 6 -
`
`
`
`Proceeding No.: IPR2023-00961
`Attorney Docket: 18768-0206IP1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`
`certifies that on August 3, 2023, a complete and entire copy of this Petitioner’s
`
`Reply in Support of Motion for Joinder was provided by email, to the Patent
`
`Owner, by serving the correspondence address of record as follows:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Kenneth J. Weatherwax
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`1016 Pico Boulevard, Santa Monica, CA 90405
`
`Hamad M. Hamad
`CALDWELL, CASSADY, & CURRY P.C.
`2121 N. Pearl St., Ste 1200, Dallas, TX 75201
`
`Email: weatherwax@lowensteinweatherwax.com,
`NeoWireless_IPRs@lowensteinweatherwax.com
`
`
`
`
`
`
`
`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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
