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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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`MERCEDES-BENZ USA, LLC,
`Petitioner
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`v.
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`DAEDALUS PRIME LLC,
`Patent Owner
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`
`
`Case (to be assigned)
`U.S. Patent No. 10,049,080
`
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` PETITIONER’S CONTINGENT MOTION FOR JOINDER UNDER 35 U.S.C.
`§ 315(c) AND 37 C.F.R. § 42.122
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`Filed on behalf of Petitioners:
`Celine Jimenez Crowson (Reg. No. 40,357)
`Joseph Raffetto (Reg. No. 66,218)
`Scott Hughes (Reg. No. 68,385)
`Ryan Stephenson (Reg. No. 76,608)
` Nicholas Rotz (Reg. No. 75,959)
` HOGAN LOVELLS US LLP
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`555 13th Street N.W.
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` Washington, D.C. 20004
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` Telephone: 202.637.5600
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` Facsimile: 202.637.5710
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`Helen Trac (Reg. No. 62,250)
`HOGAN LOVELLS US LLP
`Four Embarcadero, #3500
`San Francisco, CA 94111
`Telephone: 415-374-2300
`Facsimile: 415-374-2399
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`U.S. Patent No. 10,049,080
`Contingent Motion for Joinder
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`
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`I.
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`Statement of Precise Relief Requested
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`Mercedes-Benz USA LLC (“Petitioner”) respectively submits this Motion
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`for Joinder, concurrently with a Petition for inter partes review of U.S. Patent No.
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`10,049,080 (the “’080 patent”).
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner moves
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`for joinder with any inter partes review that is instituted as to the ’080 patent in
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`Qualcomm Inc. v. Daedalus Prime LLC, IPR2023-00567 (the “Qualcomm IPR”).1
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`Petitioner requests that action on this motion be held in abeyance until, and the
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`motion be granted if, the Qualcomm IPR is instituted. Should the Qualcomm IPR
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`be terminated prior to any institution decision or otherwise not instituted for any
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`reason, Petitioner submits this motion for joinder would be moot, and requests the
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`Board consider Petitioner’s inter partes review petition on its own merits. This
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`motion is timely because it is being filed before institution of the Qualcomm IPR.
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`Petitioner requests institution of its Petition for inter partes review filed
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`concurrently herewith. The Petition is substantively the same as the Qualcomm
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`1 Petitioner notes that IPR2023-00567 has been terminated as to Samsung
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`Electronics Co., Ltd. and Samsung Electronics America, Inc. per the Board’s
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`decision on June 27, 2023.
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`- 1 -
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`U.S. Patent No. 10,049,080
`Contingent Motion for Joinder
`IPR petition. It challenges the same claims, on the same grounds, and relies on the
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`same prior art as the Qualcomm IPR petition. Accordingly, no additional burden
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`would be created for the Board, the Qualcomm IPR petitioners, or Patent Owner if
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`joined. Joinder would therefore lead to an efficient resolution of the invalidity of
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`the ’080 patent.
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`Petitioner agrees to proceed solely on the grounds, evidence, and arguments
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`advanced, or that will be advanced, in the Qualcomm IPR if it is instituted. The
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`Petition therefore warrants institution under 35 U.S.C. § 314, and 35 U.S.C. §
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`315(c) permits Petitioner’s joinder to the Qualcomm IPR if it is instituted.
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`Petitioner 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 Qualcomm IPR petitioners cease to
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`participate in the proceeding. The Qualcomm IPR petitioner will maintain the lead
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`role in the proceeding so long as it remains in the proceeding. These limitations
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`will avoid lengthy and duplicative briefing. Petitioner also will not seek additional
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`depositions or deposition time. Accordingly, the proposed joinder will neither
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`unduly complicate the Qualcomm IPR nor delay its schedule.
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`Joinder will not unduly prejudice any party. Because joinder will not add
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`any new substantive issues, delay the schedule, burden deponents, or increase
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`needless filings, any additional costs on the Patent Owner would be minimal. On
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`the other hand, denial of joinder would prejudice Petitioner. Petitioner’s interests
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`- 2 -
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`
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`U.S. Patent No. 10,049,080
`Contingent Motion for Joinder
`may not be adequately protected in the Qualcomm IPR, particularly if the
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`Qualcomm IPR petitioners settle with the Patent Owner. Petitioner should be
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`allowed to join in a proceeding affecting a patent that has been previously asserted
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`against it.
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`II.
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`Statement of Reasons for the Relief Requested
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`A. 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
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`Mobile Commc’ns. AB v. Ancora Techs., Inc., IPR2021-00663, Paper 17, at 29-33;
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`Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony
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`Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-
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`00326, Paper 15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109,
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`Paper 15, at 3-4; Mercedes-Benz Grp. AG v. Neo Wireless, LLC., No. IPR2023-
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`00079, Paper No. 11 at 6-14.
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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)
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`- 3 -
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`
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`U.S. Patent No. 10,049,080
`Contingent Motion for Joinder
`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.
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`Dell, IPR2013-00385, Paper 19, at 4.
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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, in the event the Qualcomm IPR is instituted, joinder is appropriate
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`because the Petition introduces identical unpatentability arguments and the same
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`grounds raised in the Qualcomm IPR petition. In other words, both petitions
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`contain the same grounds based on the same prior art combinations and supporting
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`evidence against the same claims. There are no substantive differences between the
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`Petition and the Qualcomm IPR petition. Petitioner also relies on substantially the
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`same supporting evidence in the Petition as is relied on in the Qualcomm IPR.
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`Because these proceedings introduce identical unpatentability arguments and the
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`same grounds, good cause exists for joinder, so that the Board, consistent with 37
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`C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
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`resolution” of this proceeding and the Qualcomm IPR.
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`- 4 -
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`
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`U.S. Patent No. 10,049,080
`Contingent Motion for Joinder
`Moreover, Petitioner 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. This is
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`Petitioner’s first challenge against the ’080 patent at the PTAB, and there is no risk
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`of prejudice or abuse. Rather, through grant of this joinder, the Board is simply
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`offered the opportunity to ensure that the Qualcomm IPR is not prematurely
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`terminated based on opportunistic settlement or dismissal by Patent Owner with
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`fewer than all parties against which it has asserted the subject patent.
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`C.
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`Joinder Will Not Add Any New Grounds of Unpatentability or
`Impact the Trial Schedule
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`The Petition is based on the same grounds and combinations of prior art in
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`the Qualcomm IPR petition. For simplicity and efficiency, Petitioner has copied
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`the substance of the Qualcomm IPR petition and its accompanying expert
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`declaration. While Petitioner uses its own expert declarant, the expert’s declaration
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`agrees with the facts, analysis, and conclusions of the expert declaration in the
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`Qualcomm IPR and does not contain any new opinions not included in the
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`Qualcomm IPR expert declaration. See Everlight Elecs. Co., v. Document Security
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`Sys., Inc., IPR2018-01260, Paper No. 12 at 6-7 (Nov. 14, 2018) (granting motion
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`for joinder where petitioner submitted separate but substantially identical expert
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`- 5 -
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`
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`U.S. Patent No. 10,049,080
`Contingent Motion for Joinder
`declaration); see also Celltrion, IPR2018-01019, Paper No. 11 at 14 (same); Sun
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`Pharm. Indus. Ltd. v. Merck Sharp & Dohme Corp., IPR2020-01072, Paper No. 12
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`at 7 (Sept. 1, 2020) (same).
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`Petitioner does not seek to introduce grounds or claims not currently in the
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`Qualcomm IPR and seeks only to join the proceeding if and as instituted. Patent
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`Owner should not require any discovery beyond that which it may need in the
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`Qualcomm IPR. The Petition introduces no new substantive issues relative to the
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`Qualcomm IPR and does not seek to broaden the scope of the Qualcomm IPR.
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`There are no new issues for the Board to address, and Patent Owner will not be
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`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
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`because the substantive issues presented in the Petition are identical to the issues
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`presented in the Qualcomm IPR. Patent Owner will not be required to provide any
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`additional analysis or arguments beyond what it will already provide in responding
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`to the Qualcomm IPR petition.
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`Accordingly, joinder with the Qualcomm 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 Qualcomm IPR,
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`- 6 -
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`
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`U.S. Patent No. 10,049,080
`Contingent Motion for Joinder
`that the following conditions, as previously approved by the Board in similar
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`circumstances, shall apply so long as the Qualcomm IPR petitioner remains an
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`active party:
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`a. all filings by Petitioner in the Qualcomm IPR shall be consolidated
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`with the filings of the Qualcomm IPR petitioner, unless a filing
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`concerns issues solely involving Petitioner;
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`b. Petitioner shall not be permitted to raise any new grounds not
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`instituted by the Board in the Qualcomm IPR, or introduce any
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`argument or discovery not introduced by the Qualcomm IPR
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`petitioner;
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`c. Petitioner shall be bound by any agreement between Patent Owner
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`and the Qualcomm IPR petitioner concerning discovery and
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`depositions; and
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`d. Petitioner at deposition shall not receive any direct, cross
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`examination, or redirect time beyond that permitted under either 37
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`C.F.R. § 42.53 or any agreement between Patent Owner and the
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`Qualcomm IPR petitioner.
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`See Noven Pharms., Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at 5 (Apr.
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`10, 2015); see also Mercedes-Benz Grp. AG v. Arigna Tech. Ltd., No. IPR2022-
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`00776, Paper No. 8 at 11 (P.T.A.B. Sept. 8, 2022).
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`- 7 -
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`
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`U.S. Patent No. 10,049,080
`Contingent Motion for Joinder
`Unless and until the Qualcomm IPR petitioner ceases to participate,
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`Petitioner will not assume an active role in the Qualcomm IPR. Petitioner will not
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`rely on expert testimony beyond that submitted by the Qualcomm IPR petitioner
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`unless the Qualcomm IPR petitioner is terminated from the case prior to any
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`necessary depositions. Thus, Petitioner’s expert Dr. Horst would not be relied on if
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`the Qualcomm IPR petitioner’s expert remains available.
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`By Petitioner accepting an “understudy” role, the parties can comply with
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`the trial schedule assigned to the Qualcomm 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
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`efficiency by eliminating duplicative filings and discovery, and would reduce costs
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`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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`III. Conclusion
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`Joinder will not affect the substance, procedure, or scheduling of the
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`Qualcomm IPR. Petitioner 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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`- 8 -
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`U.S. Patent No. 10,049,080
`Contingent Motion for Joinder
`For the foregoing reasons, Petitioner respectfully requests inter partes
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`review of U.S. Patent No. 10,049,080 and joinder with Qualcomm Inc. v. Daedalus
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`Prime LLC, IPR2023-00567, if it is instituted.
`
`
`Date: August 18, 2023
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`
`
`/s/ Celine J. Crowson
`Celine Jimenez Crowson (Reg. No. 40,357)
`Joseph Raffetto (Reg. No. 66,218)
`Scott Hughes (Reg. No. 68,385)
`Ryan Stephenson (Reg. No. 76,608)
`Nicholas Rotz (Reg. No. 75,959)
`HOGAN LOVELLS US LLP
`555 13th Street N.W.
`Washington, D.C. 20004
`Telephone: 202.637.5600
`Facsimile: 202.637.5710
`
`Helen Trac (Reg. No. 62,250)
`HOGAN LOVELLS US LLP
`Four Embarcadero, #3500
`San Francisco, CA 94111
`Telephone: 415-374-2300
`Facsimile: 415-374-2399
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`- 9 -
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`CERTIFICATION OF SERVICE
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`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and 37
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`C.F.R. § 42.105, the foregoing were served on August 18, 2023, by filing this
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`document through the Patent Trial and Appeal Board P-TACTS System and by
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`Overnight Courier at the following address of record and addresses known to
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`Petitioner as likely to effect service and the address of record for the ’080 Patent:
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`NDWE LLP / Intel
`99 Almaden Boulevard, Suite 575
`San Jose, CA 95113
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` courtesy copy was sent to the below counsel via electronic mail:
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` A
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`Adam Rizk (Reg. No. 66,867)
`Michael T. Renaud (Reg. No. 44,299)
`Serge Subach (Reg. No. 74,652)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Tel.: (617) 348-4709
`Email: ARizk@mintz.com
`Email: MYRenaud@mintz.com
`Email: SSubach@mintz.com
`
`Peter F. Snell (Reg. No. 52,235)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`919 Third Avenue
`New York, New York 10022
`Tel.: (212) 692-6850
`Email: PFSnell@mintz.com
`
`Brian E. Farnan
`Michael J. Farnan
`Farnan LLP
`919 North Market Street, 12th Floor
`Wilmington, DE 19801
`Phone: (302) 777-0300
`Fax: (302) 777-0301
`Email: bfarnan@farnanlaw.com
`Email: mfarnan@farnanlaw.com
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`
`/Stephanie McDonough/
`Stephanie McDonough
`IP Specialist
`Hogan Lovells US LLP
`609 Main Street, Suite 4200
`Houston, TX 77002
`Telephone: (713) 632.1400
`Facsimile: (713) 632.1401
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