`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`GARMIN INTERNATIONAL, INC., GARMIN USA, INC.,
`AND GARMIN LTD.
`
`Petitioner
`v.
`PHILIPS NORTH AMERICA LLC,
`Patent Owner
`_________________
`
`
`Case No. IPR2020-00910
`U.S. Patent No. 7,088,233
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2020-00783
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED ........................... 1
`II. STATEMENT OF MATERIAL FACTS .......................................................... 1
`III. STATEMENT OF THE PRECISE RELIEF REQUESTED........................... 2
`A. Legal Standard............................................................................................. 2
`B.
`Petitioner’s Motion for Joinder is Timely ................................................... 2
`C. Each Factor Weighs in Favor of Joinder .................................................... 3
`1.
`Joinder Is Appropriate with the Microsoft IPR ........................................... 4
`2.
`Petitioner Proposes No New Grounds of Unpatentability ............................ 4
`3.
`Joinder Will Not Unduly Burden or Negatively Impact the Microsoft IPR
`Trial Schedule ......................................................................................................... 5
`4.
`Procedures to Simplify Briefing and Discovery ........................................... 6
`IV.
`INAPPLICABILITY OF GENERAL PLASTIC .......................................... 8
`V. CONCLUSION ........................................................................................... 12
`
`
`
`
`
`
`ii
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`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd. (collectively
`
`“Petitioner” or “Garmin”) respectfully submit this Motion for Joinder with a
`
`concurrently-filed Petition for Inter Partes Review of U.S. Patent No. 7,088,233 (the
`
`“Garmin IPR” or the “Garmin Petition”). Pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b), Petitioner requests institution of an inter partes review and
`
`joinder with the inter partes review in Fitbit, Inc. v. Philips North America LLC,
`
`IPR2020-00783 (the “Fitbit IPR” or the “Fitbit Petition”), which is currently
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`awaiting a decision on institution. Petitioner’s request for joinder is timely under 37
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`C.F.R. §§ 42.22 and 42.122(b), as it is submitted no later than one month after the
`
`institution date of the Fitbit IPR. The Garmin IPR is also narrowly tailored to the same
`
`claims, prior art, and grounds for unpatentability that are the subject of the Fitbit IPR.
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`In addition, Petitioner is willing to streamline discovery and briefing.
`
`Petitioner submits that joinder is appropriate because it will not unduly burden
`
`or prejudice the parties to the Fitbit IPR while efficiently resolving the question of
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`the ’233 Patent’s validity in a single proceeding.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`
`On April 8, 2020, Fitbit filed a petition for inter partes review
`
`challenging claims 1, 7-10, 13-16, 22 and 24-26 (“the Challenged Claims”) of the ʼ233
`
`
`
`1
`
`
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`Patent. See Fitbit IPR, IPR2020-00783, Paper 1 at 2-3. A decision on institution has
`
`not yet been entered.
`
`2.
`
`The ’233 Patent is subject to the following district court litigation:
`
`• Philips North America LLC v. Garmin International, Inc., Garmin USA,
`
`Inc., and Garmin LTD., Case No. 2:19-cv-6301 (C.D. Cal. 2019); and
`
`• Philips North America LLC v. Fitbit, Inc., Case No. 1:19-cv-11586-IT
`
`(D. Mass.).
`
`III. STATEMENT OF THE PRECISE RELIEF REQUESTED
`A.
`Legal Standard
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
`
`inter partes review petition to an instituted inter partes review proceeding. See 35
`
`U.S.C. § 315(c). A motion for joinder must be filed within one month of the Board
`
`instituting an original inter partes review. 37 C.F.R. § 42.122(b). In deciding whether
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`to exercise its discretion and permit joinder, the Board considers factors, including:
`
`(1) the reasons why joinder is appropriate; (2) whether the new petition presents any
`
`new grounds of unpatentability; (3) what impact, if any, joinder would have on the
`
`trial schedule for the existing review; and (4) how briefing and discovery may be
`
`simplified. See Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at
`
`4 (PTAB Apr. 24, 2013).
`
`
`
`2
`
`
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`Petitioner’s Motion for Joinder Is Timely
`
`B.
`This Motion for Joinder is timely because it is filed within one month of the
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`institution decision of the Fitbit IPR (no institution has been entered as of the filing
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`date of the Garmin IPR). See 37 C.F.R. § 42.122(b). Although not applicable to an
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`IPR filed with a timely motion for joinder, Garmin is within the one-year statutory
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`deadline for filing an IPR, as Garmin was served with a complaint asserting the ’233
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`Patent no earlier than July 23, 2019.
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`Each Factor Weighs in Favor of Joinder
`
`C.
`Each of the four factors considered by the Board weighs in favor of joinder
`
`here. Specifically, the Garmin Petition does not present any new grounds of
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`unpatentability; rather it is substantively identical to the Fitbit Petition. Further,
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`joinder will have minimal, if any, impact on the trial schedule, as all issues are
`
`substantively identical and Petitioner will accept an “understudy” role. See Sony
`
`Corp., et al. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 at 5-6 (PTAB Oct.
`
`15, 2015) (granting IPR where petitioners requested an “understudy” role); see also
`
`id. at Paper 4 at 5-7 (Motion for Joinder discussing “understudy” role). Lastly, the
`
`briefing and discovery will be simplified by resolving all issues in a single
`
`proceeding.
`
`Accordingly, joinder is appropriate here. See id. at Paper 11 at 5-6 (granting
`
`institution of IPR and motion for joinder where petitioners relied “on the same prior
`
`
`
`3
`
`
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`art, same arguments, and same evidence, including the same expert and a
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`substantively identical declaration.”); see also id. at Paper 4 at 4-5.
`
`Joinder Is Appropriate with the Fitbit IPR
`
`1.
`Joinder with the Fitbit IPR is appropriate because the Garmin Petition involves
`
`the same patent, challenges the same claims, relies on the same expert declaration,
`
`and is based on the same grounds and combinations of prior art submitted in the
`
`Fitbit Petition. The Garmin Petition is substantially identical to the Fitbit Petition,
`
`containing only ministerial differences related to formalities of a different party
`
`filing the petition.
`
`Other than these mere differences related to formalities, there are no changes
`
`in the Garmin Petition relative to the facts, citations, evidence, or arguments
`
`presented in the Fitbit IPR. Thus, the Garmin Petition presents the same grounds of
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`unpatentability as
`
`the Fitbit Petition and does not present any new
`
`theories/arguments. Because these proceedings are substantively identical, good
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`cause exists for joining this proceeding with the Fitbit IPR so that the Board can
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`efficiently resolve all grounds in both the Garmin and Fitbit IPRs in a single
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`proceeding. Id.
`
`2.
`
`Petitioner Proposes No New Grounds of Unpatentability
`
`As noted above, the Garmin Petition does not present any new grounds of
`
`unpatentability. The Garmin Petition is substantively identical to the Fitbit Petition.
`
`
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`4
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`
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`The Garmin Petition presents the unpatentability of the same claims of the same
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`patent in the same way as the Fitbit Petition.
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Fitbit IPR Trial Schedule
`
`Because the Garmin Petition is substantively identical to the Fitbit Petition,
`
`with the same grounds rejecting the same claims, there are no new issues for Patent
`
`Owner to address. Due to the same issues being presented in the Garmin Petition,
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`Patent Owner will not be required to present any additional responses or arguments.
`
`See Sony Corp., IPR2015-01353, Paper 11 at 6 (granting IPR and motion for joinder
`
`where “joinder should not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required in [the original IPR].”); see also id. at
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`Paper 4 at 5-7.
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`The Patent Owner Response (which is yet to be filed in the Fitbit IPR) will
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`also not be negatively impacted because the issues presented in both Petitions are
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`identical. Patent Owner will not be required to provide any additional analysis or
`
`arguments beyond what it will already be providing in responding to the Fitbit
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`Petition. Also, because the Garmin Petition relies on the same expert, Dr. Joseph
`
`Paradiso, and a substantively identical declaration, only a single deposition is needed
`
`for the proposed joined proceeding.
`
`Joinder of this proceeding with the Fitbit IPR does not unduly burden or
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`negatively impact the trial schedule in any meaningful way. Further, even if a small
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`5
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`
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`adjustment of the trial schedule was necessary, this is already provided for in the rules
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`and is a routine undertaking by parties in IPR proceedings. See 37 C.F.R. § 42.100(c).
`
`Thus, a slight adjustment in the trial schedule, should one be needed, is not enough
`
`of a reason to deny joining the present Garmin IPR with the Fitbit IPR.
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`Procedures to Simplify Briefing and Discovery
`
`4.
`The Fitbit Petition and Garmin Petition present substantively identical grounds
`
`of rejection, including the same art combinations against the same claims. Petitioner
`
`explicitly agrees to take a passive “understudy” role, as described by the Board:
`
`“(a) all filings by [Petitioner] in the joined proceeding be consolidated
`with [the filings of the petitioner in the Fitbit IPR], unless a filing solely
`concerns issues that do not involve [the petitioner in the Fitbit IPR];
`(b) [Petitioner] shall not be permitted to raise any new grounds not
`already instituted by the Board in the [Fitbit IPR], or introduce any
`argument or discovery not already introduced by [the petitioner in the
`Fitbit IPR]; (c) [Petitioner] shall be bound by any agreement between
`[Patent Owner] and [the petitioner in the Fitbit IPR] concerning
`discovery and/or depositions; and (d) [Petitioner] at deposition shall not
`receive any direct, cross-examination or redirect time beyond that
`permitted for [the petitioner in the Fitbit IPR] alone under either 37
`C.F.R. § 42.53 or any agreement between [Patent Owner] and [the
`petitioner in the Fitbit IPR].”
`
`See Mylan Pharm. Inc. v. Novartis AG and LTS Lohmann Therapie-Systeme AG,
`
`IPR2014-00550, Paper 38 at 5 (PTAB Apr. 10, 2015) (emphasis in original).
`
`
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`6
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`
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`Additionally, Petitioner will remain “completely inactive,” pursuant to the
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`Board’s discussion of an understudy role in Ericcson Inc. v. Uniloc 2017 LLC:
`
`In our view, an “understudy role,” if taken by [joinder petitioner],
`means [joinder petitioner] will not be making any substantive filings
`and will be bound by whatever substantive filings [original
`petitioner] makes, so long as [original petitioner] remains a party in
`the proceeding. The same is true for oral hearing presentations. Also,
`[joinder petitioner] will not seek to take cross examination testimony
`of any witness or have a role in defending the cross-examination of
`a witness, so long as [original petitioner] remains a party in the
`proceeding. Likewise with other discovery matters. If and when
`[original petitioner’s] participation in the proceeding terminates,
`[joinder petitioner] can make its own filings as Petitioner. In short,
`in its “understudy role,” [joinder petitioner] will remain completely
`inactive, but for issues that are solely directed and pertinent to
`[joinder petitioner].
`Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376, Paper 8 at 3. Petitioner submits
`
`that it will abide by the “completely inactive” role described by the Board and quoted
`
`above in the Ericcson IPR. Thus, Petitioner will, so long as Fitbit remains a party in
`
`IPR2020-00783, agree to the following:
`
`(i)
`
`Petitioner will not make any substantive filings and will be bound by
`
`whatever substantive filings Fitbit makes;
`
`(ii) Petitioner will not present any argument at the oral hearing or make any
`
`presentation at the oral hearing;
`
`
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`7
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`
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`(iii) Petitioner will not seek to take cross examination testimony of any
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`witness or have a role in defending the cross-examination of a witness;
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`(iv) Petitioner will not seek any discovery from Patent Owner; and
`
`(v)
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`Petitioner will otherwise remain completely inactive.
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`Petitioner will assume the primary role only if Fitbit ceases to participate in
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`the Fitbit IPR. Petitioner has conferred with counsel for Fitbit, and Fitbit does not oppose
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`joinder of Garmin in an “understudy” role.
`
`By Petitioner accepting an “understudy” role, Patent Owner and Petitioner
`
`Fitbit can comply with any current trial schedule set by the Board and avoid any
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`duplicative efforts by the Board or the Patent Owner. These steps will minimize any
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`potential complications or delay that potentially may result by joinder. See Sony
`
`Corp., IPR2015-01353, Paper 11 at 6-7 (granting IPR and motion for joinder because
`
`“joinder would increase efficiency by eliminating duplicative filings and discovery,
`
`and would reduce costs and burdens on the parties as well as the Board” where
`
`petitioners agreed to an “understudy” role.); see also id. at Paper 4 at 6-7.
`
`IV.
`
`INAPPLICABILITY OF GENERAL PLASTIC
`
`Petitioner respectfully submits application of the General Plastic analysis is
`
`inapplicable here. In General Plastic, the Board set forth a series of factors that may
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`be analyzed for follow-on petitions to help conserve the finite resources of the Board.
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`Here, both Garmin and Fitbit submitted separate, independent petitions. In the
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`8
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`current motion, Garmin merely seeks to join Fitbit’s petition and does not present
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`any new grounds. As such, Garmin respectfully submits that General Plastic does
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`not apply in this circumstance because Garmin would be taking an understudy role
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`and the Board’s finite resources would not be impacted. Moreover, a joinder petition
`
`in these circumstances is not the type of serial petition to which General Plastic
`
`applies, especially as Garmin has not previously filed an IPR against the ’233 Patent.
`
`The PTAB has previously stated that a joinder petition “effectively neutralizes” a
`
`General Plastic analysis. See Apple Inc. v. Uniloc 2017 LLC, IPR2018-00580, Paper
`
`13 at 10 (PTAB Aug. 21, 2018) (instituting a joinder petition where joinder petitioner
`
`previously filed a non-instituted IPR, stating joinder petitioner’s joinder motion
`
`agreeing to a passive understudy role “effectively neutraliz[es] the General Plastic
`
`factors”); see also Celltrion, Inc. v. Genetech, Inc., IPR2019-01019, Paper 11 at 10
`
`(PTAB Oct. 30, 2018) (instituting a joinder petition where joinder petition previously
`
`filed a non-instituted IPR, stating the joinder motion “effectively obviates any
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`concerns of serial harassment and unnecessary expenditures of resources”).
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`In the event the Board does analyze the General Plastic factors, those factors
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`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co., Ltd.
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`v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16 (PTAB Sept. 6, 2017)
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`(Paper 19) (precedential as to § II.B.4.i).
`
`
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`9
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`Regarding factor 1, Garmin has not previously filed a petition against the ’233
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`Patent. This factor weighs in favor of institution.
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`The second factor is whether at the time of filing the first petition the petitioner
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`knew or should have known of the prior art asserted in the second petition. This
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`factor is neutral, if not inapplicable, in the General Plastic analysis. Here, Fitbit’s
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`petition and Garmin’s petition share the same prior art because Garmin’s Petition is
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`a “copycat” of Fitbit’s petition. Because Garmin is merely seeking to join in an
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`understudy role, the factor is neutral, at best, in determining whether to institute.
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`The third factor is whether at the time of filing of the second petition the
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`petitioner already received the patent owner’s preliminary response to the first
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`petition or received the Board’s decision on whether to institute review in the first
`
`petition. This factor weighs against denial of institution. Patent Owner has not yet
`
`filed its Preliminary Response. Indeed, because this is a Motion for Joinder
`
`requesting an understudy role, Garmin is submitting a substantively identical petition
`
`and has not added to, or changed, any of the substantive arguments from the Fitbit
`
`petition. Moreover, because the present Petition is submitted as a joinder and Garmin
`
`will serve an understudy role, the Petition is not an attempt to harass the Patent
`
`Owner or otherwise engage in serial, tactical filings. Thus, this factor weighs against
`
`denial of joinder/institution.
`
`
`
`10
`
`
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second
`
`petition, and the fifth factor is whether the petitioner provides adequate explanation
`
`for the time elapsed between the filings of multiple petitions directed to the same
`
`claims of the same patent. In the context of a joinder motion where Garmin will be
`
`taking an understudy role, these factors are inapplicable. Thus, these two factors are
`
`inapplicable.
`
`The sixth factor is the finite resources of the Board. This factor also weighs
`
`against denial, especially given the Congressional intent of the IPR process.
`
`Petitioner appreciates the Board is consistently busy. Allowing Garmin’s joinder
`
`motion where it will serve in an understudy role will not impact the Board’s
`
`resources, especially because the Board will still need to analyze Fitbit’s petition.
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on which the Director notices
`
`institution of review. This factor weighs in favor of institution, as there is nothing to
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`prevent the Board from issuing a final determination on Fitbit’s petition within one
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`year of institution, even with joinder of Garmin and its petition.
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`An eighth factor identified by the Board in Shenzhen is the extent to which the
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`petitioner and any prior petitioner(s) were similarly situated defendants or otherwise
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`realized a similar-in-time hazard regarding the challenged patent. Shenzhen Silver
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`11
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`Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898, Paper 9 at 7 (PTAB
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`Oct. 1, 2018). This factor also weighs in favor of institution. This is not a situation
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`where Petitioner’s challenge to the patentability of the ’233 Patent has changed or
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`shifted due to the prior-filed Fitbit IPR. This is self-evident because this is a motion
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`for joinder where Garmin is submitting a substantively identical petition to that
`
`submitted by Fitbit.
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`Thus, none of the General Plastic factors weighs against institution and
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`joinder in this situation.
`
`V. CONCLUSION
`Based on the factors discussed above, Petitioner Garmin respectfully requests
`
`that the Board grant the Garmin Petition for Inter Partes Review of U.S. Patent No.
`
`7,088,233 and then grant joinder with the Fitbit, Inc. v. Philips North America LLC,
`
`IPR2020-00783 proceeding.
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`Respectfully submitted,
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`
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`BY: /s/ Jennifer C. Bailey
`
`Jennifer C. Bailey (Reg. No. 52,583)
`Adam P. Seitz (Reg. No. 52,206)
`ERISE IP, P.A.
`7015 College Boulevard, Suite 700
`Overland Park, KS 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`
`COUNSEL FOR PETITIONER GARMIN
`
`12
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the Motion for Joinder
`has been served on the Patent Owner on May 15, 2020, via Federal Express or by
`means at least as fast and reliable as Federal Express on the below date, at the
`following address:
`
`MAYER & WILLIAMS PC
`55 Madison Avenue
`Suite 400
`Morristown, NJ 07960
`
`Further, a courtesy copy of this Motion For Joinder Under 35 U.S.C. § 315(c)
`and 37 C.F.R. §§ 42.22 and 42.122(b) To Related Inter Partes Review IPR2020-
`00783 was sent via electronic mail to Patent Owner’s litigation counsel:
`Jean Paul Ciardullo (jciardullo@foley.com)
`Eley O. Thompson (ethompson@foley.com)
`Lucas I. Silva (lsilva@foley.com)
`
`Finally, Petitioner has sent Email to the Board and parties listed in IPR2020-
`
`00782 notifying of the filing of the Motion for Joinder and Petition for Inter Partes
`Review as follows:
`
`Naveen Modi (PH-Fitbit-Philips-IPR@paulhastings.com)
`Yar R. Chaikovsky (PH-Fitbit-Philips-IPR@paulhastings.com)
`Joseph E. Palys (PH-Fitbit-Philips-IPR@paulhastings.com)
`David Beckwith (PH-Fitbit-Philips-IPR@paulhastings.com)
`David Okano (PH-Fitbit-Philips-IPR@paulhastings.com)
`George C. Beck (gbeck@foley.com)
`Eley O. Thompson (ethompson@foley.com)
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`Respectfully submitted,
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`BY: /s/ Jennifer C. Bailey
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`Jennifer C. Bailey, Reg. No. 52,583
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`COUNSEL FOR PETITIONER GARMIN
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`13
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