Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 20
`Entered: May 14, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LEEDARSON LIGHTING CO., LTD. and
`LEEDARSON AMERICA, INC.,
`Petitioner,
`v.
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00271
`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
`
`Leedarson Lighting Co., Ltd., and Leedarson America, Inc.
`(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 No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”). Petitioner also
`filed a Motion for Joinder (“Joinder Mot.”) requesting that we join
`
`
`Tel: 571-272-7822
`
`Paper No. 20
`Entered: May 14, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LEEDARSON LIGHTING CO., LTD. and
`LEEDARSON AMERICA, INC.,
`Petitioner,
`v.
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00271
`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
`
`Leedarson Lighting Co., Ltd., and Leedarson America, Inc.
`(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 No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”). Petitioner also
`filed a Motion for Joinder (“Joinder Mot.”) requesting that we join
`
`
`
`IPR2018-00271
`Patent 8,967,844 B2
`Leedarson Lighting Co., Ltd., and Leedarson America, Inc. 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”).1 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. 1–3. Petitioner
`also represents that, if it is allowed to join the ’1280 IPR, it would agree to
`consolidated filing with Technical Consumer Products, Inc., Nicor Inc., and
`Amax Lighting “to minimize burden and schedule impact.” Id. at 2.
`Petitioner does not indicate whether Technical Consumer Products, Inc.,
`Nicor Inc., and Amax Lighting oppose Petitioner’s Motion for Joinder.
`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
`
`
`1 In IPR2018-00261, Jiawei Technology (HK) Ltd., Jiawei Technology
`(USA) Ltd., and Shenzhen Jiawei Photovoltaic Lighting Co., Ltd. also filed
`a motion for joinder related to the ’1280 IPR. We grant that motion
`concurrent with this Decision, as discussed below. See infra § II.
`
`2
`
`
`
`
`IPR2018-00271
`Patent 8,967,844 B2
`reasonable likelihood that the petitioner would prevail with respect to at
`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 Chou2 and Wegner;3
`(2) claim 8 as obvious under 35 U.S.C. § 103(a) over Chou, Zhang,4 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,5 and Silescent;6 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
`
`
`2 U.S. Patent No. 7,670,021 B2 to Chou, filed May 20, 2008, issued Mar. 2,
`2010 (Ex. 1012, “Chou”).
`3 U.S. Patent No. 7,993,034 B2 to Wegner, filed Sept. 22, 2008, issued
`Aug. 9, 2011 (Ex. 1016, “Wegner”).
`4 U.S. Patent No. 7,722,227 B2 to Zhang et al., filed Oct. 10, 2008, issued
`May 25, 2010 (Ex. 1015, “Zhang”).
`5 U.S. Patent No. 7,980,736 B2 to Soderman et al., filed Nov. 13, 2007,
`issued July 19, 2011 (Ex. 1013, “Soderman”).
`6 Silescent Lighting Corporation, S100 LP2 Product Sheet and Installation
`Guide (Ex. 1014, “Silescent”).
`
`3
`
`
`
`
`IPR2018-00271
`Patent 8,967,844 B2
`essentially the same as the Petition filed in the ’1280 IPR, and Petitioner
`limited the asserted grounds in this proceeding to only those grounds
`originally instituted in the ’1280 IPR. Joinder Mot. 1–3, 6–7; 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
`
`
`
`
`IPR2018-00271
`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 December 1,
`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
`
`
`
`
`IPR2018-00271
`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. 1.
`In its Motion for Joinder, Petitioner contends that joinder is
`appropriate because the instant Petition “involves the same patent, the same
`claims, the same prior art, the same declaration evidence from the same
`expert, and the same five instituted grounds as involved in the [’1280] IPR.”
`Joinder Mot. 6. In particular, Petitioner “adopts the reasoning and rationale
`of the [’1280] IPR petition as accepted by the Board as to the five grounds.”
`Id. at 7.
`Regarding the impact that joinder would have on the ’1280 IPR,
`Petitioner proposes “specific procedures to simplify briefing and discovery
`that should avoid any material impact on the trial schedule, or any prejudice
`to the parties involved in the [’1280] IPR.” Id. at 5. In particular, Petitioner
`proposes to consolidate its filings with Technical Consumer Products, Inc.,
`Nicor Inc., and Amax Lighting with the proviso that Petitioner would be
`allowed to file seven additional pages and that Patent Owner would be given
`seven additional responsive pages. Id. at 7–8. Regarding depositions,
`Petitioner proposes that Technical Consumer Products, Inc., Nicor Inc., and
`Amax Lighting would ask questions first, and then Petitioner would be
`“afforded an opportunity to ask questions only if any time remains within
`the allotted timeframe.” Id. at 9. Petitioner also seeks an allotment of time
`at oral argument. Id.
`On this record, we determine that the Motion for Joinder demonstrates
`that joinder of Leedarson Lighting Co., Ltd., and Leedarson America, Inc.,
`as parties to the ’1280 IPR is appropriate, and will lead to the more efficient
`resolution of the proceedings. The instant Petition does not assert any new
`
`6
`
`
`
`
`IPR2018-00271
`Patent 8,967,844 B2
`ground of unpatentability that is not already being considered in the
`’1280 IPR, relies on the same arguments, evidence, and expert declaration,
`and does not require any modification to the existing schedule. We,
`therefore, determine that joinder will not unduly complicate or delay the
`’1280 IPR.
`Nevertheless, we do not agree to Petitioner’s proposed procedures for
`briefing, depositions, and oral argument. Concurrent with the instant
`Decision, we are granting another earlier-filed motion for joinder to the
`’1280 IPR in IPR2018-00261. See ’1280 IPR, Paper 19. In that case, Jiawei
`Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and Shenzhen Jiawei
`Photovoltaic Lighting Co., Ltd. have agreed to assume a passive or
`“understudy” role in the ’1280 IPR subject to the following conditions:
` (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.
`IPR2018-00261, Paper 3, 6–7; ’1280 IPR, Paper 19, 6–7.
`We determine that the same conditions and understudy role are
`appropriate for the joinder of Leedarson Lighting Co., Ltd., and Leedarson
`
`7
`
`
`
`
`IPR2018-00271
`Patent 8,967,844 B2
`America, Inc. as parties with Technical Consumer Products, Inc., Nicor Inc.,
`and Amax Lighting in the ’1280 IPR. Given that Petitioner agrees to
`consolidated filings, we conclude Petitioner has demonstrated that joinder
`will result in efficiency and will not unduly complicate or delay the
`’1280 IPR. We do not consider it necessary at this time to permit Leedarson
`Lighting Co., Ltd., and Leedarson America, Inc. additional briefing beyond
`that already permitted to Technical Consumer Products, Inc., Nicor Inc., and
`Amax Lighting. Accordingly, all parties should work together to present
`consolidated briefing in the ’1280 IPR, with Technical Consumer Products,
`Inc., Nicor Inc., and Amax Lighting as lead Petitioner.
`In a similar fashion, we do not agree to provide Petitioner a separate
`opportunity to conduct discovery. Rather, Technical Consumer Products,
`Inc., Nicor Inc., and Amax Lighting will conduct cross-examination and
`other discovery on behalf of all joined parties. Leedarson Lighting Co., Ltd.,
`and Leedarson America, Inc. may only conduct discovery at the
`acquiescence of and within the time limits or allotment that would normally
`be given to Technical Consumer Products, Inc., Nicor Inc., and Amax
`Lighting. Put differently, Patent Owner will not be required to provide
`separate discovery responses or additional deposition time as a result of the
`joinder. For oral argument, Technical Consumer Products, Inc., Nicor Inc.,
`and Amax Lighting will likewise argue on behalf of all joined parties.
`Leedarson Lighting Co., Ltd., and Leedarson America, Inc. will be provided
`argument time only at the acquiescence of and within the time limits that
`would normally be given to Technical Consumer Products, Inc., Nicor Inc.,
`and Amax Lighting.
`
`8
`
`
`
`
`IPR2018-00271
`Patent 8,967,844 B2
`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
`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;
`
`9
`
`
`
`
`IPR2018-00271
`Patent 8,967,844 B2
`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 IPR2018-00271 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 IPR2018-00271 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
`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
`the Motion for Joinder (Paper 3) from IPR2017-00261 and reproduced
`above, so long as Technical Consumer Products, Inc., Nicor Inc., or Amax
`
`10
`
`
`
`
`IPR2018-00271
`Patent 8,967,844 B2
`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.
`
`
`11
`
`
`
`
`IPR2018-00271
`Patent 8,967,844 B2
`PETITIONER:
`Jeffery Johnson
`Don Daybell
`Orrick, Herrington & Sutcliffe LLP
`3j6ptabdocket@orrick.com
`D2DPTABDocket@orrick.com
`
`Jason G. Harp
`SCHIFF HARDIN LLP
`jharp@schiffhardin.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
`
`12
`
`
`
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