Filed on behalf of: ecobee Technologies ULC
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`
`v.
`
`OLLNOVA TECHNOLOGIES LTD
`Patent Owner.
`________________
`
`IPR2024-00131
`U.S. Patent No. 7,746,887
`________________
`
`
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2023-00626
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`
`v.
`
`OLLNOVA TECHNOLOGIES LTD
`Patent Owner.
`________________
`
`IPR2024-00131
`U.S. Patent No. 7,746,887
`________________
`
`
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2023-00626
`
`
`
`IPR2024-00131
`U.S. Patent No. 7,746,887
`
`
`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`II.
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`III. REASONS FOR REQUESTED RELIEF ....................................................... 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`The Motion for Joinder is Timely ......................................................... 4
`C.
`The Factors Weighs in Favor of Granting the Motion for
`Joinder .............................................................................................................. 4
`1.
`Joinder with the Copeland IPR Is Appropriate ........................... 5
`2.
`Petitioner Does Not Propose New Grounds ............................... 5
`3.
`Joinder Will Not Negatively Impact the Trial
`Schedule ...................................................................................... 6
`Procedures to Simplify Briefing and Discovery ......................... 7
`4.
`IV. CONCLUSION ................................................................................................ 8
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`i
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`
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`IPR2024-00131
`U.S. Patent No. 7,746,887
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Central Security Group – Nationwide, Inc. d/b/a Alert360 v. Ubiquitous
`Connectivity, LP,
`IPR2019-01610, Paper 12 (Feb. 26, 2020) .............................................. 3, 4, 5, 7
`
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper 12 (Jun. 1, 2017) ............................................................. 1
`
`LG v. Memory Integrity, LLC.,
`IPR2015-01353, Paper 11 (Oct. 15, 2015) .................................................. 4, 5, 6
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`Statutes
`35 U.S.C. § 315(c) .................................................................................................1, 3
`
`Rules
`37 C.F.R. § 42.1(b) ................................................................................................1, 5
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`37 C.F.R. § 42.122(b) ............................................................................................1, 3
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`37 C.F.R. § 42.22 ....................................................................................................... 1
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`
`
`
`
`ii
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`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`ecobee Technologies ULC (“ecobee”) respectfully submits this Motion for
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`IPR2024-00131
`U.S. Patent No. 7,746,887
`
`
`I.
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`Joinder, with a Petition (“the Petition”) for inter partes review of U.S. Patent No.
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`7,746,887 (“the ’887 patent”), filed concurrently herewith.
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`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Petitioner
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`requests institution of an inter partes review and joinder with Copeland Comfort
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`Control LP f/k/a Emerson Electric Co. v. Ollnova Technologies LTD., IPR2023-
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`00626 (“the Copeland IPR”), which the Board instituted on October 2, 2023. The
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`Copeland IPR concerns the same claims (1, 3-8, 14, 15, and 18) of the ’887 patent
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`at issue in the current Petition. This request is being submitted within the one-
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`month time limit set forth in 37 C.F.R. § 42.122(b).
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`Petitioner submits that the request for joinder is consistent with the policy
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`objectives surrounding inter partes reviews, as it is the most expedient way “to
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`secure the just, speedy, and inexpensive resolution of every proceeding.” See 37
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`C.F.R. § 42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC.,
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`IPR2017-00512, Paper 12 at 5-6 (Jun. 1, 2017). The present Petition and the
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`Copeland IPR Petition are substantively identical with respect to the asserted
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`grounds, based on the same prior art combinations and supporting evidence, and
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`asserted against the same claims. Further, upon joining the Copeland IPR,
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`Petitioner will act as an “understudy” and will not assume an active role unless
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`1
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`
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`Copeland ceases to participate in the instituted IPR. Accordingly, the proposed
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`IPR2024-00131
`U.S. Patent No. 7,746,887
`
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`joinder will not unduly complicate the Copeland IPR nor adversely impact its
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`schedule. As such, the requested joinder will promote judicial efficiency in
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`determining the patentability of the ’887 patent without prejudice to Patent Owner.
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`Moreover, Petitioner has spoken with Copeland’s counsel of record in IPR2023-
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`00626, and Copeland does not oppose this requested joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`The ’887 is currently the subject of the following district court
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`litigations: Ollnova Technologies Ltd. v. ecobee, Inc., No. 2-22-cv-
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`00072 (E.D. Tex., filed 3/8/2022) (“ecobee Litigation”), and Ollnova
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`Technologies Ltd. v. Emerson Electric Co. et al., No. 4-22-cv-01387
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`(E.D. Mo.) (transferred to E.D. Mo. 12/29/2022 after originally being
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`filed 4/5/2022 in W.D. Tex.) (“Emerson Litigation”). The ’887 was
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`also the subject of the following district court litigations that have
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`since been terminated: Ollnova Technologies Ltd. v. Google LLC, No.
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`6-22-00246 (W.D. Tex., filed 3/8/2022) (“Google Litigation”),
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`Ollnova Technologies Ltd. v. Carrier Global Corp., No. 9-22-cv-
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`80388 (S.D. Fla., filed 3/11/2022) (“Carrier Litigation”), Ollnova
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`Technologies Ltd. v. Resideo Technologies, Inc, No. 6-22-cv-00390
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`(W.D. Tex., filed 4/15/2022) (“Resideo Litigation).
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`2
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`
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`Emerson Electric Co. filed a Petition for inter partes review of claim
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`IPR2024-00131
`U.S. Patent No. 7,746,887
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`2.
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`1, 3-8, 14, 15, and 18 of the ’887 patent on March 6, 2023.
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`Subsequently, Emerson Electric Co. divested itself of the business
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`unit that filed the Petition, which unit is now known as Copeland
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`Comfort Control LP (the current petitioner in the Copeland IPR). The
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`Board instituted review of the ’887 patent as to all claims and all
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`grounds on October 2, 2023 in the Copeland IPR.
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`3.
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`The present Petition asserts the same grounds of unpatentability
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`against the same claims, and relies on the same expert declaration and
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`evidence as asserted and relied upon on in the Copeland IPR.
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`III. REASONS FOR REQUESTED RELIEF
`A. Legal Standard
`The Board may grant a motion for joining an inter partes review petition
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`with another inter partes review proceeding. 35 U.S.C. § 315(c). A petitioner may
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`request joinder up to one month after the institution date of the proceeding to
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`which joinder is requested, without prior authorization. 37 C.F.R. § 42.122(b). The
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`Board, in determining whether to exercise its discretion to grant joinder, considers
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`whether the joinder motion: (1) sets forth the reasons why joinder is appropriate;
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`(2) identifies any new grounds of unpatentability asserted in the petition; (3)
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`explains what impact (if any) joinder would have on the trial schedule for the
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`3
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`
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`existing review; and (4) addresses specifically how briefing and discovery may be
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`IPR2024-00131
`U.S. Patent No. 7,746,887
`
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`simplified. Central Security Group – Nationwide, Inc. d/b/a Alert360 v. Ubiquitous
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`Connectivity, LP, IPR2019-01610, Paper 12 at 6 (Feb. 26, 2020).
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`The Motion for Joinder is Timely
`B.
`Pursuant to 37 C.F.R. § 42.122(b), joinder can be requested without prior
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`authorization no later than one month after the institution date of the proceeding to
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`which joinder is requested. This motion is being filed no later than one month from
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`the October 2, 2023 institution date of the Copeland IPR. This motion is timely.
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`C. The Factors Weighs in Favor of Granting the Motion for Joinder
`All four factors weigh in favor of granting the motion for Petitioner. The
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`Petition is substantively identical to the petition in the Copeland IPR. Petitioner
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`does not present any new grounds of unpatentability. Additionally, as all issues are
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`substantively identical and Petitioner will act as an “understudy,” “joinder will
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`result in the just, speedy, and inexpensive resolution of the instant Petition.”
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`Central Security, IPR2019-01610, Paper 12 at 8; see LG v. Memory Integrity,
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`LLC., IPR2015-01353, Paper 11 at 6 (Oct. 15, 2015) (granting motion for joinder
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`where petitioner requested an “understudy” role). Moreover, the briefing and
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`discovery will be simplified by resolving all issues in a single proceeding.
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`Accordingly, joinder is appropriate.
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`4
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`Joinder with the Copeland IPR Is Appropriate
`1.
`The Board “routinely grants motions for joinder where the party seeking
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`IPR2024-00131
`U.S. Patent No. 7,746,887
`
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`joinder introduces identical arguments and the same grounds raised in [an] existing
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`proceeding.” Central Security, IPR2019-01610, Paper 12 at 6 (internal citations
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`omitted). Here, joinder with the Copeland IPR is appropriate because the present
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`Petition introduces the same arguments and the same grounds raised in the existing
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`Copeland IPR (i.e., challenges the same claims of the same patent, relies on the
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`same expert declaration, and is based on the same grounds and combinations of
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`prior art submitted in Copeland’s granted Petition). Although there are minor
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`differences related, e.g., to the mandatory notices and grounds for standing, there
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`are no substantive changes to the facts, citations, evidence, or arguments relied
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`upon to assert unpatentability of the claims relative to Copeland’s Petition. Ex.
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`1048.
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`Because these proceedings are substantively identical, good cause exists for
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`joining this proceeding with the Copeland IPR so that the Board, consistent with
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`37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
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`resolution” of the present Petition and Copeland’s Petition in a single proceeding.
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`Petitioner Does Not Propose New Grounds
`2.
`As noted above, the Petition challenges the same claims of the ’887 patent,
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`relying on the same expert declaration, and on the same grounds and combinations
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`5
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`
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`of prior art submitted in Copeland’s Petition. See LG, IPR2015-01353, Paper 11 at
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`IPR2024-00131
`U.S. Patent No. 7,746,887
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`5-6 (granting institution of IPR and motion for joinder where petitioner relied “on
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`the same prior art, same arguments, and same evidence, including the same expert
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`and a substantively identical declaration”); see also Central Security, IPR2019-
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`01610, Paper 12 at 8 (granting motion for joinder where the Petitions challenge the
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`same claims on the same grounds using the same prior art).
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`Joinder Will Not Negatively Impact the Trial Schedule
`3.
`Joinder should have no meaningful impact on the Copeland IPR trial
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`schedule because the present Petition presents no new issues or grounds of
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`unpatentability. See LG, IPR2015-01353, Paper 11 at 6 (granting IPR and motion
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`for joinder where “joinder should not necessitate any additional briefing or
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`discovery from Patent Owner beyond that already required in [the original IPR]”).
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`Further, Petitioner explicitly consents to the existing IPR2023-00626 trial
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`schedule. There are no new issues for the Board to address, and Patent Owner will
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`not be required to present any additional responses or arguments upon joinder. It is
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`noted that in the Copeland IPR, the Patent Owner’s Preliminary Response
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`contained only Fintiv arguments.
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`Presumably, Patent Owner has already been actively analyzing the same
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`grounds presented in the present Petition in connection with its Patent Owner’s
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`6
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`
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`Response in the Copeland IPR. Accordingly, joinder with the Copeland IPR does
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`IPR2024-00131
`U.S. Patent No. 7,746,887
`
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`not unduly burden or negatively impact the trial schedule.
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`Procedures to Simplify Briefing and Discovery
`4.
`Petitioner explicitly agrees to take an “understudy” role, which will simplify
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`briefing and discovery. Specifically, Petitioner explicitly agrees, upon joining the
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`Copeland IPR, that the following conditions shall apply so long as the current lead
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`petitioner in the Copeland IPR remains an active party:
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`a) Petitioner shall not make any substantive filings and shall be bound
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`by the filings of Copeland, unless a filing concerns termination and
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`settlement;
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`b) Petitioner shall not present any argument or make any presentation
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`at oral hearing;
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`c) Petitioner shall not seek to cross-examine or defend the cross-
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`examination of any witness; and
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`d) Petitioner shall not seek discovery from Patent Owner.
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`See, e.g., Central Security, IPR2019-01610, Paper 12 at 8 (“Petitioner avers it will
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`take an ‘understudy’ role in the [joined] IPR by consolidating all filings, refraining
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`from advancing new arguments, binding itself to any discovery agreements, and
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`limiting its deposition time to the time already allotted . . .. Thus, joinder would
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`result in the just, speedy, and inexpensive resolution of the instant Petition as well
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`7
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`as the petition filed in the [joined] IPR.”). Unless and until Copeland ceases to
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`IPR2024-00131
`U.S. Patent No. 7,746,887
`
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`participate in the instituted IPR proceeding, Petitioner will not assume an active
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`role.
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`Thus, by Petitioner accepting an “understudy” role, Patent Owner and the
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`current petitioner in the Copeland IPR can comply with the existing trial schedule
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`without requiring any duplicative efforts by the Board or the Patent Owner. These
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`steps will minimize any potential complications or delay that potentially may result
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`by joinder. Petitioner is further amenable to any other reasonable conditions the
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`Board deems necessary.
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`IV. CONCLUSION
`Based on the factors discussed above, Petitioner respectfully requests that
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`the Board grant the Petition and grant this motion for joinder with the Copeland
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`IPR.
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`
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`Date: November 2, 2023
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`Respectfully submitted,
`By: /Justin J. Oliver/
`Reg. No. 44,986
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, D.C. 20001
`Telephone: 202-721-5423
`Counsel for Petitioner ecobee
`Technologies ULC
`
`
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`8
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Motion for Joinder to
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`IPR2024-00131
`U.S. Patent No. 7,746,887
`
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`Inter Partes Review IPR2023-00626, was served on this date on the official
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`correspondence address for the patent shown in USPTO Patent Center via
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`FEDERAL EXPRESS next business day delivery:
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`DAYLIGHT LAW, P.C.
`3790 EL CAMINO REAL
`UNIT #531
`PALO ALTO, CA 94306
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`A courtesy copy of this document was also provided to counsel of record for
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`Patent Owner in IPR2023-00626 via email correspondence to the following
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`recipients:
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`
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`Date: November 2, 2023
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`Ollnova_Counsel@b-clg.com
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`Respectfully submitted,
`By: /Justin J. Oliver/
`Reg. No. 44,986
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, D.C. 20001
`Telephone: 202-721-5423
`Counsel for Petitioner ecobee
`Technologies ULC
`
`
`
`9
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