UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC,
`Petitioner
`v.
`DAEDALUS PRIME LLC,
`Patent Owner
`
`
`
`Case IPR2023-01333
`U.S. Patent No. 10,049,080
`
`
` PETITIONER’S REPLY IN SUPPORT OF ITS CONTINGENT MOTION
`FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`Filed on behalf of Petitioner:
`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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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC,
`Petitioner
`v.
`DAEDALUS PRIME LLC,
`Patent Owner
`
`
`
`Case IPR2023-01333
`U.S. Patent No. 10,049,080
`
`
` PETITIONER’S REPLY IN SUPPORT OF ITS CONTINGENT MOTION
`FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`Filed on behalf of Petitioner:
`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
`
`
`
`
`
`
`
`
`
`
`Daedalus Prime LLC (“Patent Owner”) opposes Petitioner’s Contingent
`
`Motion for Joinder1 (Paper 2) (the “Motion”) on two non-substantive grounds. See
`
`Paper 7, Patent Owner’s Opposition to Petitioner’s Contingent Motion For Joinder
`
`(the “Opposition”). First, Patent Owner argues that joinder should be denied
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`because Petitioner allegedly did not agree to rely on the Qualcomm IPR
`
`petitioner’s expert declaration and deposition. Id. at 2, 3-5. Second, Patent Owner
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`contends that Petitioner failed to follow Board procedures when filing the Motion.
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`Id. at 5. Patent Owner is incorrect on both counts. The Board should thus grant
`
`joinder for the reasons given herein and in the Motion.
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`First, Patent Owner misunderstands Petitioner’s commitment to act as an
`
`“understudy” if joined into the Qualcomm IPR. Petitioner explicitly agreed to rely
`
`on Dr. Trevor Mudge’s (the Qualcomm IPR petitioner’s expert) declaration and
`
`testimony. Mot. at 2, 7. Petitioner’s only reservation is that it will rely on its own
`
`
`1 Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner respectively
`
`moved to join any inter partes review instituted as to U.S. Patent No. 10,049,080 in
`
`Qualcomm Inc. v. Daedalus Prime LLC, No. IPR2023-00567 (the “Qualcomm
`
`IPR”). Inter partes review was instituted in the Qualcomm IPR on October 11, 2023
`
`(see Qualcomm IPR, Paper 13), so the Motion is ripe for consideration. Petitioner
`
`files this Reply pursuant to 37 C.F.R. §§ 42.23, 42.24, 42.25.
`
`1
`
`
`
`expert if “the Qualcomm IPR petitioner is terminated from the case prior to any
`
`necessary depositions” and Dr. Mudge is unavailable to be deposed. Id. at 7-8. At
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`such time, Petitioner will rely on Dr. Robert Horst’s substantively identical
`
`declaration2 and Patent Owner can depose Dr. Horst.
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`This approach is customary in joined inter partes review proceedings,
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`including those cited by Patent Owner. Oppo. at 3-4 (quoting Z-Shade Co. v.
`
`Caravan Canopy Int'l, Inc., IPR2020-01026, Paper 22 at 8 (PTAB May 17, 2021)
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`and Samsung Elecs. Co. v. Yu, IPR2020-00492, Paper 6 at 7 (PTAB Aug. 12,
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`2020), which each imposed the same conditions agreed to by Petitioner here); see
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`also Mercedes-Benz Grp. AG v. Neo Wireless, LLC., IPR2023-00079, Paper 11 at
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`6-14 (P.T.A.B. May 5, 2023) (granting joinder based on the same conditions);
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`Mercedes-Benz Grp. AG v. Arigna Tech. Ltd., IPR2022-00776, Paper 8 at 9-11
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`2 Patent Owner identifies a handful of statements that Dr. Horst offers in addition to
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`Dr. Mudge’s analysis. See Oppo. at 2 (citing Ex. 1034 at 23, n.5, n.6; 25 n.7; 31 n.8;
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`43-44 n.10.). These minor additions do not alter the fact that Dr. Horst’s declaration
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`is substantively identical to the expert declaration in the Qualcomm IPR. And, for
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`the avoidance of doubt, as Petitioner agreed in the Motion, in the joined proceeding
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`it would proceed “solely on the grounds, evidence, and arguments advanced, or that
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`will be advanced, in the Qualcomm IPR.” (Motion at 2 (emphasis added).)
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`2
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`
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`(P.T.A.B. Sept. 8, 2022) (same). Joinder accordingly presents no risk of
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`duplicative declarations, depositions, or other evidence.
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`
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`Second, Petitioner’s Motion was procedurally proper. The Board regularly
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`grants joinder motions that are contingent on institution being granted in the first
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`inter partes review proceeding. See, e.g., Mercedes-Benz USA, LLC v. Neo
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`Wireless, LLC, IPR2023-00079, Paper 11 at 6-14 (PTAB May 5, 2023); Ford
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`Motor Co. v. Carrum Techs., LLC, IPR2020-00055, Paper 8 at 2, 4-5 (PTAB Apr.
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`17, 2020). The Board has now granted institution of the Qualcomm IPR, but if
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`institution had been denied, the Motion would have simply been moot. Mot. at 1.
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`Moreover, Petitioner was authorized to file its timely motion for joinder
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`under 37 C.F.R. § 42.122(b). See, e.g., Samsung Elecs. Co. v. Fujinomaki,
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`IPR2017-01017, Paper 12 at 3-4 (P.T.A.B. May 26, 2017); Taiwan Semiconductor
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`Mfg. Co. v. Zond, LLC, IPR2014-00781, Paper 5 at 3 (P.T.A.B. May 29, 2014).
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`The Consolidated Trial Practice Guide’s contemplation of a teleconference within
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`days of a joinder motion does not account for pre-institution joinder requests. See
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`PTAB Consolidated Trial Practice Guide at 76 (November 2019), available at
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`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. A pre-institution
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`teleconference with the panel and parties from the first proceeding would have
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`been inefficient, since the panel had not yet decided whether to institute and issue a
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`schedule. Nor has the Board required such pre-institution teleconferences when
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`3
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`
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`granting similar joinder motions in the past. See, e.g., Mercedes-Benz USA, LLC v.
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`Neo Wireless, LLC, IPR2023-00079, Paper 11.3 In any event, Patent Owner
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`identifies no prejudice from Petitioner’s Motion or its procedures upon joinder.
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`For the foregoing reasons, and the reasons provided in Petitioner’s Motion,
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`Petitioner respectfully requests inter partes review of U.S. Patent No. 10,049,080
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`and joinder with Qualcomm Inc. v. Daedalus Prime LLC, IPR2023-00567.
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`
`
`Dated: October 13, 2023
`
`Respectfully submitted,
`
`/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. No. 76,608)
`Nicholas Rotz (Reg. No. 75,959)
`Helen Y. Trac (Reg. No. 62,250)
`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
`
`
`3 Petitioner is willing to meet and confer with the Board and all involved parties
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`regarding the conduct of the joined proceeding, if desired.
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`4
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`
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`CERTIFICATE OF SERVICE
`I certify that on October 13, 2023, a copy of this paper was served on
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`attorneys of record for the Patent Owner by filing this document through the PTAB
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`P-TACTS System as well as by delivering a copy via email to the following
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`addresses:
`
`
`
`Tarek N. Fahmi
`Ascenda Law Group, PC
`2150 N First St., Suite 420
`San Jose, CA 95131
`Tel: 866-877-4883
`tarek.fahmi@ascendalaw.com
`patents@ascendalaw.com
`
`/s/Nicole S. Lynch
`Nicole S. Lynch
`
`
`
`
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