`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES-BENZ USA, LTD,
`Petitioner,
`v.
`DAEDALUS PRIME LLC,
`Patent Owner.
`____________
`
`Case No.: IPR2023-01333
`U.S. Patent No. 10,049,080
`____________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S CONTINGENT MOTION FOR JOINDER
`
`
`
`
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`
`
`TABLE OF CONTENTS
`
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`I. INTRODUCTION ...................................................................................... 1
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`II. BACKGROUND ....................................................................................... 1
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`III. ARGUMENT ........................................................................................... 3
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`IV. CONCLUSION ........................................................................................ 6
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`
`
`ii
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`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Mylan Pharmaceuticals, Inc., v. Janssen Oncology, Inc.,
`IPR2016-01332 (PTAB Jan. 10, 2017) ....................................................... 5
`
`
`Noven Pharmaceuticals, Inc. v. Novartis AG,
`IPR2014-00550 (PTAB Apr. 10, 2015) ...................................................... 3
`
`
`Samsung Elecs. Co., Ltd. v. Yu,
`IPR2020-00492 (PTAB Aug. 12, 2020) ..................................................... 4
`
`
`Sun Pharm. Indus. Ltd. v. Merck Sharp and Dohme Corp.,
`IPR2020-01060 (PTAB Sept. 1, 2020) ....................................................... 4
`
`
`Unified Patents, Inc. v. Personalweb Techs. et al.,
`IPR2014-00702 (PTAB July 24, 2014) ....................................................... 3
`
`
`Z-Shade Co., Ltd. v. Caravan Canopy Int'l, Inc.,
`IPR2020-01026 (PTAB May 17, 2021) ...................................................... 3
`
`
`Statutes
`
`35 U.S.C. § 315(c) .......................................................................................... 3
`
`Regulations
`
`37 C.F.R. § 42.122 ......................................................................................... 3
`
`37 C.F.R. § 42.20(c) ....................................................................................... 3
`
`37 C.F.R. 42.20(b) .......................................................................................... 5
`
`
`Other Authorities
`
`PTAB Consolidated Trial Practice Guide (November 2019) ......................... 5
`
`
`
`iii
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`
`
`I. INTRODUCTION
`
`Petitioner, Mercedes-Benz USA LLC, seeks joinder with Qualcomm
`
`Inc. v. Daedalus Prime LLC, IPR2023-00567 (the “Qualcomm IPR”), but
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`only if that IPR is instituted. Mot. at 1. While it is true that if the Qualcomm
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`IPR is not instituted, Petitioner’s motion would be moot inasmuch as there
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`would be no proceeding to join, the rules of practice do not make provision
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`for conditional motions of this type and Petitioner did not obtain leave for
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`filing its instant motion. Further, Petitioner has not indicated that Qualcomm
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`has agreed to such joinder and nor has Petitioner agreed to rely entirely on,
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`and be bound by, the expert declaration(s) and deposition(s) in the
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`Qualcomm IPR and so has not met the requirements for being a true
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`“understudy” in that proceeding. Accordingly, Patent Owner opposes, and
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`respectfully requests that the Board deny Petitioner’s motion.
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`
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`II. BACKGROUND
`
`The Qualcomm IPR is presently pending, but no institution decision
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`has yet been reached. Mercedes-Benz filed its petition and contingent
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`motion for joinder on August 18, 2023. Mercedes-Benz characterizes its
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`petition as being “substantively the same as the Qualcomm IPR petition []
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`challeng[ing] the same claims, on the same grounds, and rel[ying] on the
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`
`
`1
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`
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`same prior art as the Qualcomm IPR petition.” Id. at 1-2. Yet, along with its
`
`petition Mercedes-Benz filed a supporting declaration by its own expert
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`witness, id. at 5, and that declaration offers opinions not included in the
`
`expert declaration filed in the Qualcomm IPR. See, e.g., Ex. 1034 at p.23, n.
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`5, n.6; p. 25, n. 7; p. 31, n. 8; pp. 43-44, n. 10. Mercedes-Benz has not
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`agreed to rely entirely on, and be bound by, the expert declaration(s) and
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`deposition(s) in the Qualcomm IPR, saying only that it “agrees to proceed
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`solely on the grounds, evidence, and arguments advanced, or that will be
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`advanced, in the Qualcomm IPR if it is instituted.” Mot. at 2. This is
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`important because should the Qualcomm IPR petitioners cease to participate
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`in the Qualcomm IPR, Mercedes-Benz would seek to avoid being a mere
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`“understudy.” See id. More particularly, Mercedes-Benz’ stipulation is
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`inadequate, and does not address Patent Owner’s concern that, in the event
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`the Qualcomm IPR petitioners were to exit the Qualcomm IPR, Mercedes-
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`Benz will attempt a “re-do” of expert testimony, inconsistent with joinder
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`proceedings. Accordingly, Patent Owner is compelled to file the present
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`opposition.
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`
`2
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`
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`III. ARGUMENT
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`Joinder is discretionary and not a matter of right. 35 U.S.C. § 315(c);
`
`37 C.F.R. § 42.122; Unified Patents, Inc. v. Personalweb Techs. et al.,
`
`IPR2014-00702, Paper 12, slip op. at 4 (PTAB July 24, 2014). The
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`petitioner seeking joinder bears the burden of demonstrating it is entitled to
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`joinder. 37 C.F.R. § 42.20(c). Moreover, the Board may impose limitations
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`to ensure that a joinder petitioner assumes a true “understudy” role. See, e.g.,
`
`Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper 38, slip
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`op. at 5 (PTAB Apr. 10, 2015) (adopting patent owner’s proposed
`
`limitations on joinder).
`
`Mercedes-Benz’ notable omission of an agreement to be bound by the
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`testimony of Qualcomm’s experts is prejudicial and inconsistent with this
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`Board’s precedent and practice. The requirement for such agreement follows
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`directly from the Board’s case law addressing similar circumstance, where
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`aspiring joinder parties submit a “placeholder” declaration from their own
`
`experts. See Z-Shade Co., Ltd. v. Caravan Canopy Int'l, Inc., IPR2020-
`
`01026, Paper 22, slip op. at 8 (PTAB May 17, 2021) (granting joinder where
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`joinder petitioner “agree[ed] to rely entirely on, and be bound by, the expert
`
`declaration(s) and deposition(s) in the [primary] IPR, and … waive its own
`
`expert declaration” if the primary petitioner “[did] not terminate its IPR
`
`
`
`3
`
`
`
`before its expert is deposed.”); Samsung Elecs. Co., Ltd. v. Yu, IPR2020-
`
`00492, Paper 6, slip op. at 7 (PTAB Aug. 12, 2020) (“Samsung agrees to be
`
`bound by the expert deposition and declarations of Apple’s expert, and
`
`Samsung will waive its own expert own expert declaration, unless Apple
`
`ceases to be an active participant in its IPR prior to its expert’s deposition).
`
`Indeed, the Board has recognized that this is one of the conditions “regularly
`
`cited in … cases where joinder of a me-too petitioner is granted.” Sun
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`Pharm. Indus. Ltd. v. Merck Sharp and Dohme Corp., IPR2020-01060,
`
`Paper 15, slip op. at 8 (PTAB Sept. 1, 2020) (“Petitioner persuades us that it
`
`has agreed to play the role of a true and silent ‘understudy’ to Mylan in the
`
`joined proceeding—agreeing to conditions like those regularly cited in other
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`Board cases where joinder of a me-too petition was granted. [Joinder
`
`Petitioner’s] Mot. 1, 5-7 (agreeing, for example, to rely on and be bound by
`
`the testimony of Mylan’s expert)”) (emphasis added).
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`Conversely, by not agreeing to be bound by the Qualcomm expert’s
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`testimony, Mercedes-Benz leaves open the possibility that it may later seek
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`to submit new testimony from its own expert, or rely on such testimony
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`included in its expert’s existing declaration, thus changing the scope of a
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`joined proceeding. In that case, Patent Owner would, at a minimum, need to
`
`seek a modification of any trial schedule to allow sufficient time for
`
`
`
`4
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`
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`additional discovery and response, which could add procedural
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`complications and delay to the proceedings. See, e.g., Mylan
`
`Pharmaceuticals, Inc., v. Janssen Oncology, Inc., IPR2016-01332, Paper 21,
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`slip op. at 10-11 (PTAB Jan. 10, 2017) (denying joinder where movant had
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`filed its own expert declarations, and did “not offer a practical way to
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`accommodate the additional discovery without inconveniencing all involved
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`or delaying the due dates in the [main] IPR.”).
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`In addition to the above, the conditional nature of Mercedes-Benz’
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`instant motion is not provided for under the Board’s rules of practice.
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`Requests for joinder are provided for under 37 C.F.R. 42.122(b), however,
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`there is no provision for making such a request conditional or contingent on
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`factors of a petitioner’s choosing. Mercedes-Benz did not seek leave of the
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`Board to file such a motion, notwithstanding that such leave is necessary for
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`any motion not provided for as a matter of right. 37 C.F.R. 42.20(b). Nor did
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`Mercedes-Benz contact the Board, the Patent Owner and the petitioner in the
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`Qualcomm IPR to request a teleconference where issues such as those
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`addressed herein might have been ironed out. See PTAB Consolidated Trial
`
`Practice Guide at 76 (November 2019). Accordingly, this motion should be
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`denied.
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`5
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`
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`IV. CONCLUSION
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`Because of the uncertainty caused by Mercedes-Benz’ submission of a
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`separate expert declaration coupled with its failure to agree be bound by the
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`representations of Qualcomm’s experts in the Qualcomm IPR, and because
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`Mercedes-Benz’ contingent motion is not provided for under the rules as of
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`right and the Board did not authorize its filing, Patent Owner respectfully
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`requests that the Board deny the motion.
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`Dated: September 15, 2023
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`
`Ascenda Law Group, PC
`2150 N First St., Suite 420
`San Jose, CA 95131
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`Respectfully submitted,
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
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`6
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`
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S CONTINGENT MOTION FOR JOINDER
`was served on September 15, 2023, by filing this document though the
`PTAB P-TACTS System as well as by delivering a copy via email directed
`to the attorneys of record for the Petitioner at the following addresses:
`Celine J. Crowson
`Joseph J. Raffetto
`Scott Hughes
`Helen Y. Trac
`Ryan Stephenson
`Nicholas Rotz
`Hogan Lovells US LLP
`555 13th Street N.W.
`Washington, D.C. 20004
`
`Email:
`celine.crowson@hogan.com
`joseph.raffetto@hoganlovells.com
`scott.hughes@hoganlovells.com
`helen.trac@hoganlovells.com
`ryan.stephenson@hoganlovells.com
`nicholas.rotz@hoganlovells.com
`
`
`
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`The parties have agreed to electronic service in this proceeding.
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`Respectfully submitted,
`Dated: Stptember 15, 2023
`
`/Tarek N. Fahmi/
`
`
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`
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`
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`Tarek N. Fahmi
`Ascenda Law Group, PC
`
`Reg. No. 41,402
`2150 N First St., Suite 420
`San Jose, CA 95131
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
`
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`
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