UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC.,
`Petitioner
`
`v.
`
`LARGAN PRECISION CO., LTD,
`Patent Owner
`
`U.S. Patent No. 8,988,796
`Case No.: IPR2021-00641
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c), AND 37
`
`C.F.R. §§ 42.22, AND 42.122(b)
`
`Mail Stop Inter Partes Review
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC.,
`Petitioner
`
`v.
`
`LARGAN PRECISION CO., LTD,
`Patent Owner
`
`U.S. Patent No. 8,988,796
`Case No.: IPR2021-00641
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c), AND 37
`
`C.F.R. §§ 42.22, AND 42.122(b)
`
`Mail Stop Inter Partes Review
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 315(c), and 37 C.F.R. §§ 42.22, 42.102, 42.122(b),
`
`and 42.222 HP Inc. respectfully submits this Motion for Joinder, together with a
`
`petition for inter partes review of U.S. Patent 8,988,796 (“the ’796 patent”),
`
`seeking cancellation of claims 1-11 and 15-25 of the ’796 patent, and joinder of
`
`this proceeding with Ability Opto-Electronics Co., Ltd. v. Largan Precision Co.,
`
`Ltd., Case IPR2020-01339 (“the Ability IPR”).
`
`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`as it is submitted within one month of February 22, 2021, the date on which the
`
`Ability IPR was instituted. See Ability IPR, Paper 10. HP submits that joinder is
`
`appropriate because it will: (1) promote efficient determination of the validity of
`
`the ’796 patent in a single proceeding without prejudice to first petitioner Ability
`
`or patent owner Largan because HP’s petition raises the identical grounds of
`
`unpatentability instituted by the Board in the Ability IPR; (2) not affect the
`
`schedule of the Ability IPR, nor increase the complexity of that proceeding; and
`
`(3) minimize burden because HP will agree to follow the same schedule as the
`
`petition that was already instituted.
`
`Accordingly, joinder in this proceeding is appropriate and HP’s Motion
`
`should be granted.
`
`2
`
`
`
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`Petitioner is involved in litigation concerning the ’796 patent in the action
`
`styled Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology Co., Ltd.
`
`and HP Inc., No. 3:20-cv-6607-JD, filed by Patent Owner Largan Precision Co.,
`
`Ltd.. The case was initially filed in the Easten District of Texas, but was
`
`subsequently transferred to the Northern District of California, where it is now
`
`pending.
`
`
`
`On July 21, 2020, Ability filed its petition for inter partes review seeking
`
`cancellation of claims 1-11 and 15-25 of the ’796 patent. (Ability IPR, Paper 1):
`
`• Ground 1: Claims 1-11 and 15-25 under 35 U.S.C. § 103 based on
`U.S. Patent No. 9,097,860 (“Yu”).
`
`• Ground 2: Claims 1–11, 15–16, 19–24 under 35 U.S.C. § 103
`based on U.S. Patent Application Publication No. 2004/0012861
`(“Yamaguchi”) and Yu.
`
`On November 23, 2020, Largan filed a preliminary response. (Ability IPR,
`
`
`
`Paper 7).
`
`On February 22, 2021, the Board instituted review of claims 1-11 and 15-25
`
`of the ’796 patent with respect to Grounds 1-2. (Ability IPR, Paper 10).
`
`On February 22, 2021, the Board entered a scheduling order in the Ability
`
`IPR, setting Oral Argument for December 2, 2021. (Ability IPR, Paper 11).
`
`On March 8, 2021, HP first learned about Ability and Largan’s settlement,
`
`when Largan filed a notice of dismissal with prejudice against Ability in the co-
`
`3
`
`
`
`pending district court action. Largan did not offer HP a dismissal with prejudice of
`
`the district court case. Given that more than a year has elapsed between the filing
`
`of the action by Largan, the only way for HP to challenge the invalidity of the ’796
`
`patent in an IPR proceeding is by stepping into Ability’s shoes in the IPR already
`
`instituted by the PTAB.
`
`HP’s petition in this proceeding seeks cancellation of claims 1-11 and 15-25
`
`of the ’796 patent based on Grounds 1-2 as set forth in the Ability IPR petition.
`
`HP’s petition in this proceeding proposes the same claim construction
`
`positions as the petition in the Ability IPR, and relies upon the same exhibits.
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`Joinder of this proceeding with the Ability IPR will not enlarge the Ability
`
`IPR, nor negatively affect its case schedule. Instead, in view of the Joint Motion to
`
`Terminate filed by Largan and Ability, joinder of this proceeding with the Ability
`
`IPR is the only way that HP can ensure that its interests in the outcome of the
`
`Ability IPR are addressed. Thus, joinder here is appropriate.
`
`A.
`
`Legal Standard
`
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
`
`review proceedings. The statutory provision governing joinder of inter partes
`
`review proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(c) JOINDER.--If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as
`
`4
`
`
`
`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 such a
`response, determines warrants the institution of an inter
`partes review under section 314.
`
`Under 35 U.S.C. § 315(c), the Board has authority to join a second inter
`
`partes review proceeding to an instituted first inter partes review proceeding. The
`
`motion for joinder must be filed within one month of institution of the first inter
`
`partes review proceeding. 37 C.F.R. § 42.122(b).
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`of substantive and procedural issues on the proceedings, as well as other
`
`considerations, while being “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 Dell, Inc. v. Network-1 Security Solutions,
`
`Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. The Board should
`
`consider “the policy preference for joining a party that does not present new issues
`
`that might complicate or delay an existing proceeding.” Id. at 10. Under this
`
`framework, joinder of the present IPR with the Ability IPR is appropriate.
`
`“A motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would have on the trial schedule
`
`for the existing review; and (4) address specifically how briefing and discovery
`
`5
`
`
`
`may be simplified.” Id. at 4 and Macronix Int’l Co. v. Spansion, IPR2014-00898,
`
`Paper 15 at 4 (Aug. 13, 2014). The Board should also consider “the policy
`
`preference for joining a party that does not present new issues that might
`
`complicate or delay an existing proceeding.” See Dell, Inc. v. Network-1 Security
`
`Solutions, Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. Under this
`
`framework, joinder of the present petition with the Ability IPR is appropriate.
`
`The fact that the Ability IPR appears likely to terminate should not prevent
`
`joinder. In Qualcomm Inc. v. Bandspeed, Inc., No IPR2015-00314, -01577,
`
`joinder of a follow-on petition that raised no new grounds was permitted even
`
`though the original IPR proceeding was terminated while the motion for joinder
`
`was pending. (Paper 21 at 8). There, the Board found that joinder would not
`
`discourage settlement, nor would it hinder a “just, speedy, and inexpensive
`
`resolution of the parties’ dispute.” Id. The same is true here.
`
`B.
`
`Joinder Will Not Impact the Existing IPR Schedule
`
`Joinder in this case will not impact the Board’s ability to complete its review
`
`of the ’796 patent in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule
`
`37 C.F.R. § 42.100(c) provide that inter partes review proceedings should be
`
`completed and the Board’s final decision issued within one year of institution of
`
`the review. In this case, joinder will not affect the Board’s ability to issue the
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`6
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`
`
`
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`decision within this required one-year timeframe because HP’s Petition is
`
`substantially identical to the Ability IPR.
`
`HP raises no issues or grounds that are not already before the Panel in the
`
`Ability IPR. HP challenges the same claims as the Ability IPR, and does so based
`
`on the same grounds raised in the Ability IPR. Indeed, the petition filed by HP is
`
`essentially identical to that filed by Ability. There are no substantive differences.
`
`HP also relies on a substantially identical declaration from the same expert
`
`used in the Ability IPR.1 And HP has included the same exhibits, and given them
`
`the same exhibit numbers as in the Ability IPR.
`
`Moreover, because Ability has already signaled its intent to withdraw from
`
`the Ability IPR proceeding, HP’s presence in the proceeding carries no risk of
`
`duplicative or superfluous briefing or motion practice. HP agrees to adopt all
`
`
`1 HP has filed a declaration of Dr. William Plummer concurrently with this motion
`
`and its IPR Petition. (Exhibit 1007). The Plummer declaration is substantially
`
`identical to the Plummer declaration filed along with the Ability IPR. (Ability
`
`IPR, Exhibit 1007). At the preference of the Panel, HP would be willing to
`
`withdraw its own Plummer declaration if it is permitted instead to rely on the
`
`previously-filed Plummer declaration in the Ability IPR.
`
`7
`
`
`
`
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`arguments and positions previously raised by Ability (except for termination), and
`
`now merely seeks to step into Ability’s shoes to continue the IPR proceeding.
`
`C. No New Grounds of Unpatentability Are Asserted
`
`As noted above, HP has not asserted any new grounds of unpatentability,
`
`and instead raises the identical grounds challenging the identical claims as the
`
`Ability IPR. Indeed, not only are the grounds the same, but HP’s arguments
`
`supporting those grounds are also identical to the arguments set forth in the Ability
`
`IPR.
`
`D.
`
`Joinder Will Not Prejudice Any Party
`
`No party will be prejudiced by joining HP as a Petitioner to the Ability IPR.
`
`Instead, a substantial risk of prejudice will be avoided. As Largan and Ability
`
`have now reached a settlement of their dispute in the district court, and have
`
`likewise jointly moved to terminate the Ability IPR, refusal to join HP to the
`
`Ability IPR to replace Ability as Petitioner will result in the Ability IPR being
`
`terminated before reaching a final written decision, thereby prejudicing HP. As
`
`HP remains a party to the district court litigation brought by Largan, HP also has a
`
`clear interest in resolving the patentability of the ’796 patent by allowing the IPR
`
`proceeding involving the ’796 patent to reach a final written decision.
`
`Joinder also will not prejudice Largan or Ability. Ability has settled its
`
`dispute with Largan, and thus no longer has any interest in the disposition of the
`
`8
`
`
`
`
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`Ability IPR. Moreover, as noted above, HP’s Petition raises no new grounds or
`
`arguments beyond those already raised in the Ability IPR, and thus creates no
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`additional burden for Largan beyond that which it already faced as a patent owner.
`
`Continuing these proceedings even stand to benefit Largan, as they will resolve
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`questions of patentability related to the ’796 patent in a shorter and less costly
`
`manner than litigation.
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`IV. CONCLUSION
`
`For the foregoing reasons, HP respectfully requests that this proceeding be
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`joined with the Ability IPR.
`
`
`
`Date: March 9, 2021
`
`
`
`
`
`
`
`By: /Sasha G. Rao/ .
`Sasha G. Rao
`Reg. No. 57,017
`srao@maynardcooper.com
`Postal and Hand-Delivery Address:
`MAYNARD, COOPER & GALE, LLP
`Transamerica Pyramid Center
`600 Montgomery Street, Suite 2600
`San Francisco, CA 94111
`Telephone: 415.646.4702
`Fax: 205.714.6420
`
`9
`
`
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