UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA)
`LTD., SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD.,
`ATICO INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA,
`INC., CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN
`FLORIDA), CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN
`CHINA), COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP.,
`SMART SOLAR, INC., AND TEST RITE PRODUCTS CORP.
`Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner.
`
`_____________________
`
`Case IPR2015-00580
`Patent 7,429,827
`_____________________
`
`Reply to
`Opposition to
`Motion for Joinder with
`IPR2014-00938
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA)
`LTD., SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD.,
`ATICO INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA,
`INC., CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN
`FLORIDA), CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN
`CHINA), COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP.,
`SMART SOLAR, INC., AND TEST RITE PRODUCTS CORP.
`Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner.
`
`_____________________
`
`Case IPR2015-00580
`Patent 7,429,827
`_____________________
`
`Reply to
`Opposition to
`Motion for Joinder with
`IPR2014-00938
`
`
`
`Petitioner’s Reply to Opposition to Motion for Joinder – IPR2015-00580
`
`I.
`II.
`
`Joining the Petitions Is Appropriate and Will Conserve Resources .............. 1
`The ’580 Petition Raises Substantially New Arguments to Address the Issue
`that the Board Found Lacking in the ’938 Petition....................................... 2
`Joinder Would Minimally Impact the ’938 IPR Schedule ............................ 4
`III.
`IV. Conclusion................................................................................................... 5
`
`
`
`Petitioner’s Reply to Opposition to Motion for Joinder – IPR2015-00580
`
`Petitioner respectfully motioned the Board to use its discretion to join
`
`IPR2015-00580 (“the ’580 IPR”) with IPR2014-00938 (“the ’938 IPR”). The patent
`
`owner’s arguments against joinder are unavailing. Specifically, in the ’938 IPR, the
`
`Board did not institute review of claims 31–34, holding that the ’938 petition did not
`
`address sufficiently the construction of “cycle.” ’938 IPR, paper 20 at 16–17. Petitioner
`
`then moved for rehearing, which the Board denied by deeming the arguments to be
`
`new. Thus, the patent owner is incorrect that the Board already considered the
`
`rehearing arguments, to the extent they overlap with any arguments in the ’580
`
`petition. Opp. at 5–8 and ’938 IPR, paper 27 at 1 and 4. Ultimately, three reasons
`
`justify joinder: (1) conserving judicial resources, (2) the ’580 petition contains new
`
`arguments to address the “cycle” term that the Board found lacking in the ’938 IPR,
`
`and (3) joinder will have a negligible impact on the ’938 IPR schedule.
`
`I.
`
`Joining the Petitions Is Appropriate and Will Conserve Resources
`
`The ’580 petition applies a new ground to claims 31–34 to address the patent
`
`owner’s narrowed construction of “cycle,” but uses the identical scope of prior art
`
`applied to instituted claim 30. The only difference between the instituted and non-
`
`instituted claims is the use of “continuous color changing cycle” instead of “varying color,”
`
`which the patent owner admitted mean substantially the same thing. Ex. 1109 at 24.
`
`Accordingly, the petitioner requests that the Board resolve efficiently the patentability
`
`of all substantially similar claims in a joined IPR.
`
`1
`
`
`
`Petitioner’s Reply to Opposition to Motion for Joinder – IPR2015-00580
`
`In addition, joinder would not materially add to the patent owner’s or Board’s
`
`workloads, as the two IPRs are very similar and rely on the same art. Conversely,
`
`denying joinder would be inefficient and necessarily duplicate briefing at the District
`
`Court, as the petitioner would challenge claims 31–34 there, possibly resulting in
`
`different claim constructions and inconsistent positions. See also, Target Corp. v.
`
`Destination Maternity Corp., IPR2014-00508 (Paper 28, at 12 (joinder avoids parallel
`
`litigation on the same issues). By using its discretion to join the petitions, the Board
`
`can reach a just, speedy and inexpensive resolution that consolidates briefing and
`
`discovery.
`
`II.
`
`The ’580 Petition Raises Substantially New Arguments to Address the
`Issue that the Board Found Lacking in the ’938 Petition
`The patent owner stated that joinder is inappropriate because Lau does not
`
`remedy the deficiencies of Chliwnyj. Opp. at 9. The patent owner is incorrect. The
`
`’580 petition demonstrates that both Chliwnyj and Lau use microcontrollers to drive
`
`LEDs to produce light patterns. See e.g., petition at 28–30 and 42–51. To the extent
`
`that the light patterns must repeat to constitute a “color changing cycle,” and to the extent
`
`that Chliwnyj did not clearly teach repeating light patterns, Chliwnyj did teach that
`
`they were well known, and Chliwnyj in combination with Wu and Lau demonstrates
`
`that it was obvious to repeat a “color changing cycle” to produce a “visual effect [that] is
`
`both pleasing and comforting.” Id. Therefore, the ’580 petition is not deficient as
`
`2
`
`
`
`Petitioner’s Reply to Opposition to Motion for Joinder – IPR2015-00580
`
`alleged by the patent owner and, moreover, presents substantially different arguments
`
`to overcome § 325(d).
`
`The Board did not consider the petitioner’s arguments in the motion for
`
`rehearing, deeming them to be impermissible new arguments. Consequently, and
`
`contrary to the patent owner’s arguments, the rehearing was not a “second bite.”
`
`Opp. at 1, 4-5–8, 11, 13, 15. And, in any event, the Board permits petitioners to seek a
`
`second review of a patent. See, e.g., 157 Cong. Rec. S5370-S5378, S5376 (AIA § 18
`
`petitions (i.e., CBMs) allow a “second bite”; Congress did the same with joinder in 35
`
`U.S.C. § 315(c); see also, Target II, at 12) (permitting joinder).
`
`The patent owner’s inconsistent position regarding the meaning of “cycle”
`
`further supports providing petitioners a chance to respond. Although petitioners must
`
`do their best in their first petitions to consider possible patent owner arguments, it
`
`would be unjust to require, and impossible for, petitioners to anticipate all patent
`
`owner arguments, particularly where, as here, the patent owner makes an argument
`
`inconsistent with its previous position. Opp. at 8–9. The petitioner could not
`
`reasonably foresee the patent owner adopting a narrowed construction of “cycle,” i.e.,
`
`requiring repetition, because (1) the specification neither expressly nor implicitly
`
`requires repetition, and (2) the patent owner never made this argument in litigation,
`
`and, in fact, offered a broader construction. This unforeseeable and inconsistent
`
`statement warrants a second petition, which the Board has discretion to grant.
`
`157 Cong. Rec. S1360, 1376 (factors for granting joinder include, “the breadth or
`
`3
`
`
`
`Petitioner’s Reply to Opposition to Motion for Joinder – IPR2015-00580
`
`unusualness of the claim scope that is alleged, particularly if alleged later in litigation;
`
`claim-construction rulings that adopt claim interpretations that are substantially
`
`different from the claim interpretation used in the first petition when that petition’s
`
`interpretation was not manifestly in error” (emphasis added)).
`
`The patent owner’s reliance on Samsung Electronics Co. v. Rembrandt Wireless
`
`Technologies (Opp. at 2, 12, citing IPR 2015-00118, paper 14) is also misplaced. Samsung
`
`is distinguishable for several reasons. First, in Samsung, the first and second petitions
`
`proposed identical grounds for the same claims. Here, the ’580 petition proposes a
`
`new ground for claims 31–34 (the ground is only at issue for claim 30 in the ’938
`
`IPR). Second, unlike Samsung where the petitioner could have anticipated the patent
`
`owner’s arguments, here the patent owner submitted a claim construction that was
`
`inconsistent with its position taken during prior litigation. Ex. 1112 at 34–35 (n.23).
`
`The petitioner could not reasonably anticipate this change. Third, in Samsung, the
`
`petitioner reply was due about a week after the second decision on institution, which
`
`complicated joinder because the IPR would require another patent owner response.
`
`Here, the modified schedules mean that joinder would have minimal impact.
`
`III.
`
`Joinder Would Minimally Impact the ’938 IPR Schedule
`
`The current schedule also favors joinder. The Board accelerated the preliminary
`
`response due date in the ’580 IPR, and the parties agreed to extend the due dates in
`
`the ’938 IPR to ensure an efficient and inexpensive proceeding if the Board grants
`
`joinder, without disrupting the majority of the due dates of the ’938 IPR. In addition,
`
`4
`
`
`
`Petitioner’s Reply to Opposition to Motion for Joinder – IPR2015-00580
`
`the patent owner will depose Dr. Shackle on April 22–23, more than a month after
`
`the preliminary response, which, based on past precedent, allows enough time for the
`
`Board to decide whether to institute and for the parties to consolidate depositions,
`
`creating even more efficiency. See, e.g., IPR2014-00557, papers 9 and 10.
`
`Finally, the petition is not “time barred.” Contrary to the patent owner’s
`
`position (Opp. at 13), the Board consistently holds that § 315(c) allows issue joinder,
`
`even if a petition is otherwise time-barred. See e.g., Target II at 6 (it is well-settled law
`
`that § 315(c) allows for issue joinder). Attempting to avoid this well-settled law, the
`
`patent owner forecasts a “deluge” of joinder petitions in this “particular case,” if the
`
`Board grants joinder. Opp. at 15. This sky-will-fall argument is without merit because
`
`one motion to join a petition, involving four substantially similar claims and relying on
`
`prior art of the same scope, does not a deluge make. And, in any event, the Board
`
`apparently considered and rejected this argument in Target II. See Target II at 11.
`
`IV. Conclusion
`The petitioner chose to litigate patentability at the Board, where the parties are
`
`already litigating substantially similar claims in the ’938 IPR. It would be most efficient
`
`for the public, the patent owner, and the petitioner to add four substantially similar
`
`claims to resolve the obviousness of all in claims one forum—not two.
`
`5
`
`
`
`Petitioner’s Reply to Opposition to Motion for Joinder – IPR2015-00580
`
`Dated:
`
`3/16/15
`
`233 South Wacker Drive
`Suite 7800
`Chicago, IL 60606-6306
`
`Respectfully submitted,
`
`DENTONS U.S. LLP
`
`/Mark Nelson/
`Mark C. Nelson
`Reg. No. 43,830
`Lissi Mojica
`Reg. No. 63,421
`Kevin Greenleaf
`Reg. No. 64,062
`Daniel Valenzuela
`Reg. No. 69,027
`
`6
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing Reply to Opposition to
`
`Motion for Joinder with IPR2014-00938 was served on the Counsel for the Patent
`
`Owner via email to the following email addresses:
`
`tfshiells@shiellslaw.com
`
`admin@shiellslaw.com
`
`marchusb@tlpmb.com
`
`Respectfully submitted,
`
`Dated: _March 16, 2015 ____
`
`___/Nona Durham/_______
`Nona Durham
`
`233 South Wacker Drive
`Suite 7800
`Chicago, IL 60606-6306
`
`
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