`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`v.
`YECHEZKAL EVAN SPERO,
`Patent Owner.
`
`
`Case (to be assigned)
`U.S. Patent No. 11,208,029
`
`
`
`PETITIONER’S CONTINGENT MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND37 C.F.R. § 42.122.
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`
`
`
`Filed on behalf of Petitioner:
`Celine Jimenez Crowson (Reg. No. 40,357)
`Joseph J. Raffetto (Reg. No. 66,218)
`Scott Hughes (Reg. No. 68,385)
`Ryan Stephenson (Reg. No. 76,608)
`HOGAN LOVELLS US LLP
`555 13th Street N.W.
`Washington, D.C. 20004
`Telephone: 202.637.5600
`Facsimile: 202.637.5710
`
`
`
`I.
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`Statement of Precise Relief Requested
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`Mercedes-Benz USA LLC (“Mercedes”) respectively submits this
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`Contingent Motion for Joinder, concurrently with a Petition for Inter Partes
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`Review of U.S. Patent No. 11,208,029 (the “’029 Patent”). Pursuant to 35 U.S.C.
`
`§ 315(c) and 37 C.F.R. § 42.122(b), Mercedes conditionally requests inter partes
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`review and moves for joinder with Volkswagen Group of America, Inc. v.
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`Yechezkal Evan Spero, IPR2022-01586 (the “Volkswagen IPR”), which was
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`instituted on May 24, 2023. This motion is timely because it is being filed within
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`one month of institution of the Volkswagen IPR. This motion is contingent because
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`Mercedes has filed its own IPR petition as described below. Counsel for
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`Volkswagen has indicated Volkswagen does not oppose the requested contingent
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`joinder.
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`On June 8, 2023, Mercedes filed an IPR petition (IPR2023-01034),
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`challenging Claims 1-33 of the ’029 Patent (the “Mercedes Petition”). Mercedes
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`prefers and requests full consideration of the Mercedes Petition, which includes
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`grounds different than those presented in the Volkswagen IPR. Should the
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`Mercedes Petition be instituted, Mercedes withdraws this motion (if not yet ruled
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`upon), and would withdraw or move to terminate Mercedes from any joined
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`proceeding (should this motion be ruled upon prior to any institution decision on
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`
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`1
`
`
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`the Mercedes Petition). See, e.g., Apple Inc. v. Speir Technologies LTD, IPR2023-
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`00305, Paper 9 (P.T.A.B. May 15, 2023).
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`Mercedes moves for joinder with the Volkswagen IPR if, and only if, the
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`Board denies institution of the Mercedes Petition. Should the Board deny
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`institution of the Mercedes Petition, Mercedes thus requests institution and joinder
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`of the Petition for Inter Partes Review filed concurrently herewith. The Petition is
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`substantively the same as the Volkswagen IPR petition. It challenges the same
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`claims, on the same grounds, and relies on the same prior art as instituted in the
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`Volkswagen IPR, and therefore would create no additional burden for the Board,
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`the Volkswagen IPR petitioner, or Patent Owner if joined. Joinder would therefore
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`lead to an efficient resolution of the invalidity of the ’029 patent.
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`If so joined, Mercedes agrees to proceed solely on the grounds, evidence,
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`and arguments advanced, or that will be advanced, in the Volkswagen IPR as
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`instituted. The Petition therefore warrants institution under 35 U.S.C. § 314, and 35
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`U.S.C. § 315(c) permits Petitioner’s joinder to the instituted Volkswagen IPR,
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`again should the Mercedes Petition be denied institution.
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`Mercedes stipulates that if joinder is granted, it will act as an “understudy”
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`and will not assume an active role unless the Volkswagen IPR petitioner ceases to
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`participate in the proceeding. Joinder will not unduly prejudice any party because
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`joinder will not add any new substantive issues, delay the schedule, burden
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`2
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`
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`deponents, or increase needless filings, any additional costs on the Patent Owner
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`would be minimal. On the other hand, denial of joinder would prejudice Mercedes.
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`Mercedes’ interests may not be adequately protected in the Volkswagen IPR,
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`particularly if the Mercedes Petition is denied institution and the Volkswagen IPR
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`petitioner settles with the Patent Owner. Mercedes should be allowed to join in a
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`proceeding affecting a patent asserted against it.
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`Given the similarities of the proceedings, the lack of undue prejudice to
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`Patent Owner, and the potential benefit to the public and to the Board that would
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`accrue by Mercedes’ cooperative participation in the Volkswagen IPR, in the event
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`that the Volkswagen IPR petitioner’s participation terminates, the Board should
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`institute the Petition and grant Mercedes’ Motion for Joinder.
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`II.
`
`Background and Related Proceedings
`
`An entity separate from the Patent Owner reflected in USPTO records,
`
`Torchlight Technologies, LLC (“Torchlight”), asserted the ’029 Patent in two
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`lawsuits in the District of Delaware on June 7, 2022:
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`• Case No. 1:22-CV-751 against Petitioner Mercedes-Benz USA, LLC,
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`Daimler AG,1 Volkswagen Group of America, Inc., Audi AG, Audi
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`of America, LLC, Porsche AG, and Porsche North America, Inc.
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`1 Daimler AG became Mercedes-Benz Group AG on February 1, 2022.
`3
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`
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`• Case No. 1:22-CV-752 against General Motors LLC, General Motors
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`Co., and General Motors Holdings, LLC.
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`These cases are in their infancy. Many defendants were only just served
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`(including “Daimler AG”); responses to the operative complaint have not been
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`filed; and no discovery has been exchanged. Further, the cases have been
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`indefinitely stayed pending resolution of whether the complaint should be
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`dismissed due to lack of standing and failure to join necessary parties.
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`On September 22, 2022, Unified Patents, LLC filed an IPR petition
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`(IPR2022-01500), challenging Claims 1, 2, 10-13, and 23-24 of the ’029 Patent
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`(the “Unified IPR”). The Board instituted the Unified IPR on May 4, 2023.
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`On October 3, 2022, Volkswagen Group of America, Inc. filed the
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`Volkswagen IPR, challenging Claims 1-33 of the ’029 Patent. The Board instituted
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`the Volkswagen IPR on May 24, 2023.
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`On June 8, 2023, Mercedes filed the Mercedes Petition, challenging Claims
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`1-33 of the ’029 Patent. The Mercedes Petition is pending and awaiting a decision
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`on institution. Again, Mercedes seeks joinder to the Volkswagen IPR if and only if
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`the Mercedes Petition is denied institution. Should the Mercedes Petition be
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`instituted, Mercedes withdraws this motion (if not yet ruled upon), and would
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`withdraw or move to terminate Mercedes from any joined proceeding (should this
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`motion be ruled upon prior to any institution decision on the Mercedes Petition).
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`4
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`
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`On June 22, 2023, Porsche Cars North America, Inc. (“Porsche”) filed an
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`IPR petition (IPR2023-01122) with a motion to join the Volkswagen IPR.
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`III.
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`Statement of Reasons for the Relief Requested
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`A.
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` Legal Standards and Applicable Rules
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`The Board has discretion to join a properly filed IPR petition to an existing
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`IPR proceeding. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Sony
`
`Mobile Comms. AB v. Ancora Technologies, Inc., IPR2021-00663, Paper 17, at 29-
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`33; Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6;
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`Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-
`
`00326, Paper 15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109,
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`Paper 15, at 3-4.
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`“The Board will determine whether to grant joinder on a case-by-case basis,
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`taking into account the particular facts of each case, substantive and procedural
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`issues, and other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The
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`movants bear the burden of proof in establishing entitlement to the requested relief.
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`37 §§ 42.20(c), 42.122(b). A motion for joinder should:
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`(1) set forth the reasons why joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what impact
`(if any) joinder would have on the trial schedule for the existing review; and
`(4) address specifically how briefing and discovery may be simplified.
`Dell, IPR2013-00385, Paper 19, at 4.
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`5
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`B.
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`Joinder with the Proceeding is Appropriate
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`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`No. 12 at 9 (Aug. 24, 2016) (emphasis added) (internal quotations and citations
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`omitted).
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`Here, joinder with the Volkswagen IPR is appropriate because the Petition
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`introduces identical unpatentability arguments and the same grounds raised in the
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`Volkswagen IPR petition. In other words, both petitions contain the same grounds
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`based on the same prior art combinations and supporting evidence against the same
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`claims. There are no substantive differences between the Petition and the
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`Volkswagen IPR petition. Petitioner also relies on substantially the same
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`supporting evidence in the Petition as is relied on in the Volkswagen IPR.2
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`2 The supporting expert declaration of Dr. Nikolaos Papanikolopoulos submitted by
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`Mercedes agrees with the facts, analysis, and conclusions of the expert declaration
`
`in the Volkswagen IPR. The declaration of Dr. Papanikolopoulos 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. 12
`
`at 6-7 (Nov. 14, 2018) (granting motion for joinder where petitioner submitted
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`
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`6
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`
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`Because these proceedings introduce identical unpatentability arguments and the
`
`same grounds, good cause exists for joinder, so that the Board, consistent with 37
`
`C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
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`resolution” of this proceeding and the Volkswagen IPR.
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`Moreover, Mercedes notes that the Board has indicated that the factors
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`outlined by General Plastics are not particularly relevant here “where a different
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`petitioner files a ‘me-too’ or ‘copycat’ petition in conjunction with a timely motion
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`to join.” See, e.g., Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at
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`9-11; Pfizer, Inc. v Genentech, Inc., IPR2017-02063, Paper 25 at 7-8. Through
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`grant of this joinder, the Board is simply offered the opportunity to ensure that the
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`Volkswagen IPR is not prematurely terminated based on opportunistic settlement
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`or dismissal by Patent Owner with fewer than all parties against which it has
`
`asserted the subject patent.
`
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`separate but substantially identical expert declaration); see also Celltrion, Inc. v.
`
`Genentech, Inc., IPR2018-01019, Paper No. 11 at 14 (Oct. 30, 2018) (same); Sun
`
`Pharmaceutical Industries Ltd. v. Merck Sharp & Dohme Corp., IPR2020-01072,
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`Paper No. 12 at 7 (Sept. 1, 2020) (same).
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`7
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`
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`C.
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`Joinder Will Not Add New Grounds of Unpatentability or Impact
`the Trial Schedule
`The Petition is based on the same grounds and combinations of prior art in
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`the Volkswagen IPR. For simplicity and efficiency, Petitioner has copied the
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`substance of the petition in the Volkswagen IPR and its accompanying expert
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`declaration. While Petitioner uses its own expert declarant, the expert’s
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`declaration agrees with the facts, analysis, and conclusions of the expert
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`declaration in the Volkswagen IPR and does not contain any new opinions not
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`included in the Volkswagen IPR expert declaration. See Everlight Elecs. Co., v.
`
`Document Security Sys., Inc., IPR2018-01260, Paper No. 12 at 6-7 (Nov. 14,
`
`2018) (granting motion for joinder where petitioner submitted separate but
`
`substantially identical expert declaration); see also Celltrion, Inc. v. Genentech,
`
`Inc., IPR2018-01019, Paper No. 11 at 14 (Oct. 30, 2018) (same); Sun
`
`Pharmaceutical Industries Ltd. v. Merck Sharp & Dohme Corp., IPR2020-01072,
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`Paper No. 12 at 7 (Sept. 1, 2020) (same).
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`Mercedes does not seek to introduce grounds or claims not currently in the
`
`Volkswagen IPR and seeks only to join the proceeding as instituted. Patent Owner
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`should not require any discovery beyond that which it may need in the Volkswagen
`
`IPR. The Petition introduces no new substantive issues relative to the Volkswagen
`
`IPR and does not seek to broaden the scope of the Volkswagen IPR.
`
`
`
`8
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`
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`Joinder will not impact the Volkswagen IPR trial schedule because the
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`Petition presents no new issues or grounds of unpatentability. See LG, IPR2015-
`
`01353, Paper No. 11 at 6 (granting IPR and motion for joinder where “joinder
`
`should not necessitate any additional briefing or discovery from Patent Owner
`
`beyond that already required in [the original IPR]”). Further, Mercedes consents to
`
`the trial schedule as adopted in the Volkswagen IPR. There are no new issues for
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`the Board to address, and Patent Owner will not be required to present any
`
`additional responses or arguments.
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`The Patent Owner’s Response, if any, will also not be negatively impacted
`
`because the substantive issues presented in the Petition are identical to the issues
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`presented in the Volkswagen IPR. Patent Owner will not be required to provide
`
`any additional analysis or arguments beyond what it will already provide in
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`responding to the Volkswagen IPR petition.
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`Accordingly, joinder with the Volkswagen IPR does not unduly burden or
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`negatively impact the trial schedule.
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`D.
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`Procedures to Simplify Briefing and Discovery
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`Petitioner agrees to take an “understudy” role, which will simplify briefing
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`and discovery. Specifically, Petitioner agrees, upon joining the Volkswagen IPR,
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`that the following conditions, as previously approved by the Board in similar
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`9
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`
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`circumstances, shall apply so long as the Volkswagen IPR petitioner remains
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`active parties:
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`(a)
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`all filings by Mercedes in the Volkswagen IPR shall be consolidated
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`with the filings of the Volkswagen IPR petitioner, unless a filing
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`concerns issues solely involving Petitioners;
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`(b) Mercedes shall not be permitted to raise any new grounds not instituted
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`by the Board in the Volkswagen IPR, or introduce any argument or
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`discovery not introduced by the Volkswagen IPR petitioner in the
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`Volkswagen IPR;
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`(c) Mercedes shall be bound by any agreement between Patent Owner
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`and the Volkswagen IPR petitioner in the Volkswagen IPR
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`concerning discovery and depositions; and
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`(d) Mercedes at deposition in the Volkswagen IPR shall not receive any
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`direct, cross examination, or redirect time beyond that permitted under
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`either 37 C.F.R. § 42.53 or any agreement between Patent Owner and
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`the Volkswagen IPR petitioner. See Noven Pharmaceuticals, Inc. v.
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`Novartis AG, IPR2014-00550, Paper No. 38 at 5 (Apr. 10, 2015).
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`
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`10
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`
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`Unless and until the Volkswagen IPR petitioner ceases to participate,
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`Mercedes will not assume an active role in the Volkswagen IPR.3 Mercedes will
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`not rely on expert testimony beyond that submitted by Volkswagen unless
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`Volkswagen is terminated from the case prior to any necessary depositions. Thus,
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`Mercedes’ expert Dr. Papanikolopoulos would not be relied on in the Volkswagen
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`IPR if Volkswagen’s expert remains available.
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`By Mercedes accepting an “understudy” role, the parties can comply with the
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`trial schedule assigned to the Volkswagen IPR without needing any duplicative
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`efforts by the Board or the Patent Owner. These steps minimize the possibility of
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`any complication or delay from joinder. See LG, IPR2015-01353, Paper No. 11 at
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`6-7 (granting IPR and motion for joinder because “joinder would increase
`
`efficiency by eliminating duplicative filings and discovery, and would reduce costs
`
`and burdens on the parties as well as the Board” where petitioners agreed to an
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`“understudy” role). Petitioner is further willing to agree to any other reasonable
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`conditions the Board deems necessary.
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`3 Should Volkswagen IPR petitioner cease to participate in any joined IPR
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`proceeding, Mercedes would work with Porsche on who would take the active role
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`as lead petitioner.
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`11
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`IV. Conclusion
`Joinder will not affect the substance, procedure, or scheduling of the
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`Volkswagen IPR. Mercedes files this motion under the statutory joinder provisions
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`as contemplated by the AIA. Joinder will simplify the issues and promote
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`efficiency, justice, and speed.
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`For the foregoing reasons, should the Board deny institution of the Mercedes
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`Petition (IPR2023-01034), Mercedes respectfully requests inter partes review of
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`U.S. Patent No. 11,208,029 and joinder with Volkswagen Group of America, Inc. v.
`
`Yechezkal Evan Spero, IPR2022-01586.
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`Dated: June 23, 2023
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`Respectfully submitted,
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`/s/ Celine J. Crowson
`
`
`
`Celine Jimenez Crowson (Reg. No. 40,357)
`Joseph J. Raffetto (Reg. No. 66,218)
`Scott Hughes (Reg. 68,385)
`Ryan Stephenson (Reg. 76,608)
`HOGAN LOVELLS US LLP
`555 13th Street N.W.
`Washington, D.C. 20004
`Telephone: 202.637.5600
`Facsimile: 202.637.5910
`
`Counsel for Petitioner Mercedes-Benz USA, LLC
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`12
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and
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`37 C.F.R. § 42.105, the foregoing Motion for Joinder was served on June 23, 2023,
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`by Overnight Courier and hand delivery at the following address of record and
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`addresses known to Petitioner as likely to effect service and the address of record
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`for the ’029 patent:
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`Brooks Kushman
`1000 Town Center
`22nd Floor
`Southfield, MI 48075
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` /s/ Nicole Lynch
`Nicole Lynch
`Hogan Lovells US LLP
`555 Thirteenth Street NW
`Washington, DC 20004
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`13
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