Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 7
`Entered: May 14, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JIAWEI TECHNOLOGY (HK) LTD.,
`JIAWEI TECHNOLOGY (USA) LTD., and
`SHENZHEN JIAWEI PV LIGHTING CO., LTD.,
`Petitioner,
`v.
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00261
`Patent 8,967,844 B2
`____________
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 314(a) and 37 C.F.R. §§ 42.108, 42.122
`
`Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
`Shenzhen Jiawei Photovoltaic Lighting Co., Ltd. (collectively, “Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of
`claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent
`
`
`Tel: 571-272-7822
`
`Paper No. 7
`Entered: May 14, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JIAWEI TECHNOLOGY (HK) LTD.,
`JIAWEI TECHNOLOGY (USA) LTD., and
`SHENZHEN JIAWEI PV LIGHTING CO., LTD.,
`Petitioner,
`v.
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00261
`Patent 8,967,844 B2
`____________
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 314(a) and 37 C.F.R. §§ 42.108, 42.122
`
`Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
`Shenzhen Jiawei Photovoltaic Lighting Co., Ltd. (collectively, “Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of
`claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent
`
`
`
`IPR2018-00261
`Patent 8,967,844 B2
`No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”). Petitioner also filed a
`Motion for Joinder (“Joinder Mot.”) requesting that we join Jiawei
`Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and Shenzhen Jiawei
`Photovoltaic Lighting Co., Ltd. as parties with Technical Consumer
`Products, Inc., Nicor Inc., and Amax Lighting in Tech. Consumer Prods.,
`Inc. v. Lighting Science Group Corp., Case IPR2017-01280 (“the
`’1280 IPR”). Paper 3.
`In the ’1280 IPR, we instituted an inter partes review as to claims 1–
`5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent on five grounds
`of unpatentability. ’1280 IPR, Paper 10. According to Petitioner, the
`Petition filed in this proceeding is “substantively identical” to the petition
`from the ’1280 IPR and asserts identical arguments and grounds of
`unpatentability against the same patent claims. Joinder Mot. 2–5. Petitioner
`also represents that, if it is allowed to join the ’1280 IPR, it will assume a
`passive or “understudy” so long as Technical Consumer Products, Inc.,
`Nicor Inc., and Amax Lighting remain active parties in the ’1280 IPR. Id. at
`6–7. Petitioner indicates that Technical Consumer Products, Inc., Nicor Inc.,
`and Amax Lighting will not oppose Petitioner’s Motion for Joinder. Id. at 7.
`Patent Owner, Lightning Science Group Corp. (“Patent Owner”), filed
`neither a preliminary response nor a response to Petitioner’s Motion for
`Joinder.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and any preliminary response “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`
`2
`
`
`
`
`IPR2018-00261
`Patent 8,967,844 B2
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`we institute an inter partes review as to claims 1–5, 7–9, 11, 12, 14, 16, 17,
`19, and 21–24 of the ’844 patent on the same grounds instituted in the
`’1280 IPR. We also grant Petitioner’s Motion for Joinder.
`
`
`I. INSTITUTION OF INTER PARTES REVIEW
`In the ’1280 IPR, we instituted an inter partes review as to claims 1–
`5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent on the following
`grounds of unpatentability: (1) claims 1–3, 5, 7, 8, 9, 11, 12, 14, 16, and 21–
`24 as obvious under 35 U.S.C. § 103(a) over Chou1 and Wegner;2
`(2) claim 8 as obvious under 35 U.S.C. § 103(a) over Chou, Zhang,3 and
`Wegner; (3) claims 1, 2, 8, 9, 16, 21, and 22 as obvious under 35 U.S.C.
`§ 103(a) over Zhang; (4) claims 3 and 4 as obvious under 35 U.S.C. § 103(a)
`over Zhang, Soderman,4 and Silescent;5 and (5) claims 11, 17, and 19 as
`obvious under 35 U.S.C. § 103(a) over Zhang and Wegner. ’1280 IPR,
`Paper 10, 26. As mentioned above, the Petition filed in this proceeding is
`essentially the same as the Petition filed in the ’1280 IPR, and Petitioner
`
`
`1 U.S. Patent No. 7,670,021 B2 to Chou, filed May 20, 2008, issued Mar. 2,
`2010 (Ex. 1012, “Chou”).
`2 U.S. Patent No. 7,993,034 B2 to Wegner, filed Sept. 22, 2008, issued
`Aug. 9, 2011 (Ex. 1016, “Wegner”).
`3 U.S. Patent No. 7,722,227 B2 to Zhang et al., filed Oct. 10, 2008, issued
`May 25, 2010 (Ex. 1015, “Zhang”).
`4 U.S. Patent No. 7,980,736 B2 to Soderman et al., filed Nov. 13, 2007,
`issued July 19, 2011 (Ex. 1013, “Soderman”).
`5 Silescent Lighting Corporation, S100 LP2 Product Sheet and Installation
`Guide (Ex. 1014, “Silescent”).
`
`3
`
`
`
`
`IPR2018-00261
`Patent 8,967,844 B2
`limited the asserted grounds in this proceeding to only those grounds
`originally instituted in the ’1280 IPR. Joinder Mot. 2–5; compare Pet. 3–58,
`with ’1280 IPR, Paper 1, 3–58.
`Given that we are granting Petitioner’s Motion for Joinder below and
`the Petition is essentially the same as and only pertains to the instituted
`grounds in the ’1280 IPR, we conclude that the information presented in the
`Petition establishes that there is a reasonable likelihood that Petitioner would
`prevail on its assertion that (1) claims 1–3, 5, 7, 8, 9, 11, 12, 14, 16, and 21–
`24 would have been obvious over Chou and Wegner; (2) claim 8 would have
`been obvious over Chou, Zhang, and Wegner; (3) claims 1, 2, 8, 9, 16, 21,
`and 22 would have been obvious over Zhang; (4) claims 3 and 4 would have
`been obvious over Zhang, Soderman, and Silescent; and (5) claims 11, 17,
`and 19 would have been obvious over Zhang and Wegner. Pursuant to
`§ 314, we institute an inter partes review as to these claims of the
`’844 patent on the same grounds instituted in the ’1280 IPR for the reasons
`stated in our Institution Decision from the ’1280 IPR. See ’1280 IPR,
`Paper 10.
`
`
`II. GRANTING PETITIONER’S MOTION FOR JOINDER
`The AIA created administrative trial proceedings, including inter
`partes review, as an efficient, streamlined, and cost-effective alternative to
`district court litigation. 35 U.S.C. § 315(c) provides (emphasis added):
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`
`4
`
`
`
`
`IPR2018-00261
`Patent 8,967,844 B2
`such a response, determines warrants the institution of an inter
`partes review under section 314.
`“Any request for joinder must be filed, as a motion under § 42.22, no later
`than one month after the institution date of any inter partes review for which
`joinder is requested.” 37 C.F.R. § 42.122(b). Joinder may be authorized
`when warranted, but the decision to grant joinder is discretionary. See
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board determines whether to
`grant joinder on a case-by-case basis, taking into account the particular facts
`of each case, substantive and procedural issues, and other considerations.
`See Sony Corp. of Am. v. Network-1 Security Solutions, Inc., Case
`IPR2013-00495, slip op. at 3 (PTAB Sept. 16, 2013) (Paper 13) (“Sony”).
`When exercising its discretion, the Board is mindful that patent trial
`regulations, including the rules for joinder, must be construed to secure the
`just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C.
`§ 316(b); 37 C.F.R. § 42.1(b).
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`A motion for joinder should (1) set forth the reasons why joinder is
`appropriate; (2) identify any new ground(s) of unpatentability asserted in the
`petition; and (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review. See Sony at 3. Petitioner should address
`specifically how briefing and/or discovery may be simplified to minimize
`schedule impact. See Kyocera Corp. v. SoftView LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15) (representative).
`Petitioner’s Motion is timely because it was filed on November 30,
`2017, which is within one month of our November 1, 2017, institution of the
`’1280 IPR. See 37 C.F.R. § 42.122 (“Any request for joinder must be filed,
`
`5
`
`
`
`
`IPR2018-00261
`Patent 8,967,844 B2
`as a motion under § 42.22, no later than one month after the institution date
`of any inter partes review for which joinder is requested.”); Joinder Mot. 3.
`In its Motion for Joinder, Petitioner contends that joinder is
`appropriate because the instant Petition “is substantively identical to the
`Original Petition as to the subset of claims and grounds at issue and does not
`present any new prior art, grounds of unpatentability, exhibits, or
`arguments.” Joinder Mot. 3. In particular, Petitioner “relies on the same
`expert declaration and other supporting exhibits, and asserts the same
`combinations of prior art upon which the Board has instituted inter partes
`review.” Id. at 4. Petitioner further argues that joinder will not impact the
`schedule of the ’1280 IPR, particularly because the instant Petition “presents
`no new issues or arguments for Patent Owner[] or the Board to consider.”
`Id. at 5.
`Petitioner (“Joinder Petitioners” below) also agrees to be bound by the
`following conditions in its “understudy” role if it is joined to the ’1280 IPR:
`(a) all filings by Joinder Petitioners in the joined proceeding
`[shall] be consolidated with the filings of the Original
`Petitioner, unless a filing solely concerns issues that do not
`involve the Original Petitioner;
`(b) Joinder Petitioners shall not be permitted to raise any new
`grounds not already instituted by the Board, or introduce any
`argument or discovery not already introduced by the
`Original Petitioner;
`(c) Joinder Petitioners shall be bound by any agreement
`between Patent Owner and the Original Petitioner
`concerning discovery and/or depositions; and
`(d) Joinder Petitioners at deposition shall not receive any direct,
`cross examination or redirect time beyond that permitted for
`the petitioner in this proceeding alone under either 37 C.F.R.
`§ 42.53 or any agreement between Patent Owner[] and the
`Original Petitioner.
`
`6
`
`
`
`
`IPR2018-00261
`Patent 8,967,844 B2
`Id. at 6–7.
`Given that Petitioner agrees to consolidated filings and discovery, we
`conclude Petitioner has demonstrated that joinder will result in efficiency
`and will not unduly complicate or delay the ’1280 IPR.
`Based on all of the considerations above, we are persuaded that
`Petitioner has met its burden of demonstrating that joinder is warranted
`under the circumstances, so we grant Petitioner’s Motion for Joinder.
`Petitioner will have a limited role in the ’1280 IPR subject to the conditions
`set forth above. If at some point the ’1280 IPR is terminated with respect to
`Technical Consumer Products, Inc., Nicor Inc., or Amax Lighting, the roles
`of the remaining parties in the proceeding may be reevaluated.
`
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`instituted as to claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844
`patent on the following grounds of unpatentability:
`Claims 1–3, 5, 7, 8, 9, 11, 12, 14, 16, and 21–24 of the ’844 patent as
`obvious over Chou and Wegner pursuant to 35 U.S.C. § 103(a);
`Claim 8 of the ’844 patent as obvious over Chou, Zhang, and Wegner
`pursuant to 35 U.S.C. § 103(a);
`Claims 1, 2, 8, 9, 16, 21, and 22 of the ’844 patent as obvious over
`Zhang pursuant to 35 U.S.C. § 103(a);
`Claims 3 and 4 of the ’844 patent as obvious over Zhang, Soderman,
`and Silescent pursuant to 35 U.S.C. § 103(a); and
`
`7
`
`
`
`
`IPR2018-00261
`Patent 8,967,844 B2
`Claims 11, 17, and 19 of the ’844 patent as obvious over Zhang and
`Wegner pursuant to 35 U.S.C. § 103(a);
`FURTHER ORDERED that inter partes review is commenced on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial;
`FURTHER ORDERED that the trial is limited to the grounds of
`unpatentability listed above, and no other grounds of unpatentability are
`authorized for inter partes review;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`Case IPR2017-01280 is granted, and Petitioner is joined as a party to Case
`IPR2017-01280;
`FURTHER ORDERED that Case IPR2018-00261 is instituted, joined,
`and subsequently terminated under 37 C.F.R. § 42.72, and all further filings
`in the joined proceeding shall be made in Case IPR2017-01280;
`FURTHER ORDERED that the case caption in Case IPR2017-01280
`shall henceforth list Petitioner as a Petitioner entity and include a footnote
`reflecting the joinder of IPR2018-00261 with Case IPR2017-01280;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-01280 shall remain in effect and govern the proceeding, subject to
`any schedule changes agreed to by the parties in IPR2017-01280 pursuant to
`the Scheduling Order;
`FURTHER ORDERED that Petitioner’s participation in the briefing,
`depositions, and oral argument of the joined proceedings shall be subject to
`the acquiescence of Technical Consumer Products, Inc., Nicor Inc., and
`Amax Lighting to Petitioner’s participation and, absent our express
`authorization, Petitioner shall not file papers or exhibits apart from
`
`8
`
`
`
`
`IPR2018-00261
`Patent 8,967,844 B2
`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting;
`FURTHER ORDERED that, absent our express authorization to the
`contrary, Petitioner shall be bound by the conditions set forth on pages 6–7
`of its Motion for Joinder and reproduced above, so long as Technical
`Consumer Products, Inc., Nicor Inc., or Amax Lighting remains a party to
`IPR2017-01280; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the file of Case IPR2017-01280.
`
`
`9
`
`
`
`
`IPR2018-00261
`Patent 8,967,844 B2
`PETITIONER:
`Mark C. Nelson
`Kevin Greenleaf
`Daniel A. Valenzuela
`Dentons US LLP
`Mark.Nelson@dentons.com
`Kevin.Greenleaf@dentons.com
`Daniel.Valenzuela@dentons.com
`
`PATENT OWNER:
`Garret Leach
`Eric Hayes
`Eugene Goryunov
`Kyle Kantarek
`KIRKLAND & ELLIS LLP
`garret.leach@kirkland.com
`eric.hayes@kirkland.com
`egoryunov@kirkland.com
`kyle.kantarek@kirkland.com
`
`10
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
