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