throbber
Paper 8
`Trials@uspto.gov
`Entered: January 23, 2018
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NAVICO, INC.,
`Petitioner,
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`Patent Owner.
`____________
`
`Case IPR2017-02051
`Patent 7,268,703 B1
`____________
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`

`

`IPR2017-02051
`Patent 7,268,703 B1
`
`I.
`
`INTRODUCTION
`On August 10, 2017, we instituted an inter partes review of claims 1–
`7, 12–23, 25–29, and 41–45 of U.S. Patent No. 7,268,703 B1 (Ex. 1001, “the
`’703 patent”). FLIR Sys., Inc. v. Garmin Switzerland GmbH, Case IPR2017-
`00946 (PTAB Aug. 10, 2017) (Paper 7) (“the FLIR IPR”). Trial in that
`matter is pending on the following grounds of unpatentability:
`1. Whether claims 1, 7, 12, 19, 27, and 28 are unpatentable under
`35 U.S.C. § 102(b) as anticipated by de Jong;1 and
`2. Whether claims 2–6, 13–18, 20–23, 25, 26, 29, and 41–45 are
`unpatentable under 35 U.S.C. § 103(a) as unpatentable over
`de Jong and Tetley.2
`An additional Petition has now been filed with the Board seeking
`joinder with the FLIR IPR. Specifically, in IPR2017-02051, Navico, Inc.
`(“Navico”) filed a Petition requesting inter partes review of claims 1–7, 12–
`23, 25–29, and 41–45 of the ’703 patent. Paper 1. Concurrently with its
`Petition, Navico filed a Motion for Joinder (Paper 3), seeking joinder with
`the FLIR IPR. The owner of the ’703 patent, Garmin Switzerland GmbH
`(“Garmin”), filed an Opposition to Petitioner’s Motion for Joinder. Paper 7.
`Navico did not file a reply brief in support of the Motion for Joinder and
`Garmin did not file a Preliminary Response.
`
`
`1 W.J. de Jong, Automated Route Planning – A Network-Based Route
`Planning Solution for Marine Navigation, University of Nottingham
`(December 2001) (Ex. 1005, “de Jong”).
`2 Tetley et al., ELECTRONIC NAVIGATION SYSTEMS (3d ed. Butterworth-
`Heinemann 2001) (Ex. 1006, “Tetley”).
`
`
`
`

`

`IPR2017-02051
`Patent 7,268,703 B1
`
`
`The instant Petition asserts the same grounds of unpatentability as
`those on which trial was instituted in the FLIR IPR. Compare IPR2017-
`00946, Paper 7, with Paper 1.
`As a threshold matter, we determine that the Motion for Joinder was
`timely. Our Rules provide that a request for joinder must be filed “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). The Motion was filed on
`September 7, 2017, more than one month after the August 10, 2017
`institution date of the FLIR IPR, and is thus timely.
`For the reasons explained below, we grant the Motion.
`
`II.
`
`THE PETITION WARRANTS INSTITUTION
`The controlling statute regarding joinder of a party to an inter partes
`review 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 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.
`The statute makes clear that joinder of a party to an instituted inter
`partes review is within the Board’s3 discretion. That discretion may only be
`exercised, however, if the party seeking joinder “files a petition . . . that the
`Director . . . determines warrants the institution of an inter partes review.”
`
`
`3 By regulation, the Director’s discretion has been delegated to the Board.
`37 C.F.R. § 42.4(a).
`
`2
`
`

`

`IPR2017-02051
`Patent 7,268,703 B1
`
`35 U.S.C. § 315(c). As a threshold issue, therefore, we must first determine
`whether the instant Petition warrants institution of an inter partes review.
`The grounds of unpatentability asserted in the instant Petition are
`identical to those instituted in the FLIR IPR. Navico states that its Petition
`includes the same grounds and arguments as those in the FLIR IPR, and
`notes that it relies on the same declarant, Michael S. Braasch, Ph.D., as FLIR
`does. Paper 3, 4 (“The Navico Petition is substantively identical to the FLIR
`Petition, containing only minor differences related to formalities of a
`different party filing the petition, and noting Petitioner Navico’s current
`agreement with the Board on claim construction.”); compare Ex. 1003 with
`IPR2017-00946, Ex. 1003. Garmin did not file a Preliminary Response
`arguing the merits of the asserted grounds of unpatentability.
`We previously determined, upon consideration of the Petition and
`Garmin’s Preliminary Response in the FLIR IPR, that the record in that
`proceeding established a reasonable likelihood that FLIR would prevail with
`respect to claims 1–7, 12–23, 25–29, and 41–45. IPR2017-00946, Paper 7,
`33. Given the identical grounds and evidence presented in the present
`proceeding, we likewise determine that the instant Petition warrants
`institution on all presented grounds. We rely on, and hereby incorporate by
`reference, the reasoning set forth in our Decision on Institution in the FLIR
`IPR. See id. at 6–33.
`
`III. DISCRETION TO GRANT JOINDER
`Having determined that the instant Petition warrants institution, we
`must determine whether to exercise our discretion to join Navico as a party
`to the FLIR IPR. As the moving party, Navico bears the burden of showing
`that joinder is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
`
`3
`
`

`

`IPR2017-02051
`Patent 7,268,703 B1
`
`joinder should: (1) set forth the reasons why joinder is appropriate; (2)
`identify any new grounds of unpatentability; (3) explain what impact (if any)
`joinder would have on the trial schedule; and (4) address specifically how
`briefing and discovery may be simplified. See Paper 3, 2–3; Sony Corp. of
`Am. v. Network-1 Security Solutions, Inc., Case IPR2013-00495, slip op. at 3
`(PTAB Sept. 16, 2013) (Paper 13); Kyocera Corp. v. SoftView LLC, Case
`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)
`(representative).
`As discussed above, the instant Petition asserts the same grounds of
`unpatentability as those instituted in the FLIR IPR and does not present any
`argument beyond those already at issue in the FLIR IPR. Furthermore, if
`joinder is granted, Navico proposes to take an “understudy” role in the
`joined proceeding so long as FLIR remains an active party, and will
`consolidate filings and discovery. Paper 3, 6–8. Specifically, Navico states
`that
`
`(a) all filings by [Petitioner] in the joined proceeding be
`consolidated with [the filings of the petitioner in the FLIR IPR],
`unless a filing solely concerns issues that do not involve [the
`petitioner in the FLIR IPR]; (b) [Petitioner] shall not be permitted
`to raise any new grounds not already instituted by the Board in
`the [FLIR IPR], or introduce any argument or discovery not
`already introduced by [the petitioner in the FLIR IPR]; (c)
`[Petitioner] shall be bound by any agreement between [Patent
`Owner] and [the petitioner in the FLIR 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 FLIR IPR] alone
`under either[ ]37 C.F.R. § 42.53 or any agreement between
`[Patent Owner] and [the petitioner in the FLIR IPR].
`
`4
`
`

`

`IPR2017-02051
`Patent 7,268,703 B1
`
`Id. at 6–7 (quoting Mylan Pharm. Inc. v. Novartis AG, Case IPR2014-00550,
`slip op. at 5 (PTAB Apr. 10, 2015) (Paper 38)). Navico also states that it
`“explicitly consents to the existing trial schedule” in the FLIR IPR. Id. at 5.
`In its Opposition to the Motion, Garmin states that it “opposes
`Petitioner’s Motion for Joinder, but only to the extent that Petitioner attempts
`any equivocation in serving as a silent understudy.” Paper. 7, 2.
`Specifically, Garmin states that it would not oppose the Motion to the extent
`Navico agrees, subject to FLIR Systems, Inc. and FLIR Maritime US, Inc.
`(f/k/a Raymarine, Inc.) (collectively “FLIR”) remaining a participating party
`in the FLIR IPR, to the following conditions:
`(1) Petitioner will not file any papers or exhibits in any joined
`proceeding, except pro hac vice motions and administrative
`filings (see IPR2016-01393, Paper 9 at 2-3 (Nov. 21, 2016));
`(2) Petitioner may attend but will not otherwise participate in any
`deposition in any joined proceeding (see IPR2015-01881, Paper
`11 at 5, Bullet Point 3 (Jan. 19, 2016));
`(3) Petitioner may attend but will not otherwise participate in any
`oral hearing or conference call with the Board in any joined
`proceeding;
`(4) Petitioner will be copied on correspondence between Patent
`Owner and FLIR, but neither Patent Owner nor FLIR will be
`required to obtain Petitioner’s consent or opposition to any
`request by Patent Owner or FLIR in any joined proceeding (e.g.,
`Patent Owner will not be required to confer with FLIR for a
`requested motion or action in the IPR);
`(5) Petitioner will comply with the role otherwise set forth by
`Petitioner in its Motion for Joinder, Paper 3 at 6-7; and
`(6) Petitioner will not otherwise “actively participate” in the
`joined proceeding and will assume a “passive role” (see
`IPR2017-01636, Paper 10 at 12 (Oct. 3, 2017); IPR017-0012,
`Paper 27 at 2 (Jun. 1, 2017)).
`
`5
`
`

`

`IPR2017-02051
`Patent 7,268,703 B1
`
`Id. at 2–3.
`Upon review, the Motion for Joinder demonstrates that joinder of
`Navico as a party to the FLIR IPR is appropriate, and will lead to the more
`efficient resolution of the proceedings. The instant Petition does not assert
`any new ground of unpatentability that is not already being considered in the
`FLIR IPR, relies on the same arguments and evidence, and does not require
`any modification to the existing schedule. We, therefore, determine that
`joinder will not unduly complicate or delay the proceedings, and exercise
`our discretion to join Navico as a party to the FLIR IPR.
`With respect to the parties’ different proposed limitations on Navico’s
`participation in the understudy role, we determine that Garmin’s proposed
`limitations are more restrictive than necessary at this time, or are already
`provided for under Navico’s proposal and/or the Board’s rules. For
`example, Garmin’s limitations require that Navico comply with its own
`proposal (condition 5), and all parties already must be copied on
`correspondence (condition 4). See 37 C.F.R. §§ 42.6(e) (rules pertaining to
`service), 42.5(d) (prohibiting ex parte communications). Navico’s
`participation in the FLIR IPR shall be governed by the following order. To
`the extent Navico believes it needs to further participate in discovery,
`briefing, and/or oral argument, or the parties have a dispute over the scope of
`Navico’s participation, the parties should promptly request a conference call
`and any issues will be addressed on a case-by-case basis.
`If at some point the FLIR IPR is terminated with respect to FLIR, the
`role of any remaining party or parties in the proceeding will be reevaluated.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`
`6
`
`

`

`IPR2017-02051
`Patent 7,268,703 B1
`
`
`ORDERED that an inter partes review is instituted as to claims
`1–7, 12–23, 25–29, and 41–45 of the ’703 patent;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’703 patent is hereby instituted commencing on the
`entry date of this Decision, 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 two grounds of
`unpatentability asserted in IPR2017-00946;
`FURTHER ORDERED that Navico’s Motion for Joinder (Paper 3) is
`granted;
`FURTHER ORDERED that Navico is joined as a Petitioner to
`IPR2017-00946;
`FURTHER ORDERED that Case IPR2017-02051 is instituted, joined,
`and terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`proceeding shall be made in Case IPR2017-00946;4
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2017-00946, as modified by any stipulation agreed to by the parties,
`shall continue to govern the joined proceeding;
`FURTHER ORDERED that, throughout IPR2017-00946, Navico and
`FLIR will file papers, except for motions that do not involve the other party,
`as a single, consolidated filing pursuant to the page limits set forth in
`37 C.F.R. § 42.24; and that the filing party (either Navico or FLIR) will
`
`
`4 Counsel for FLIR and Navico should refer to the Board’s website for
`information regarding filings in the Patent Trial and Appeal Board End to
`End (PTAB E2E) system.
`
`7
`
`

`

`IPR2017-02051
`Patent 7,268,703 B1
`
`identify each such filing as a Consolidated Filing, and will conduct
`coordinated (not separate) discovery;
`FURTHER ORDERED that Navico shall not be permitted to raise any
`new grounds not already instituted in IPR2017-00946, or introduce any
`argument or discovery not already introduced by FLIR;
`FURTHER ORDERED that Navico shall not receive any direct, cross
`examination, or redirect time beyond that permitted for FLIR alone, under
`either 37 C.F.R. § 42.53 or any agreement between Garmin and FLIR;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2017-00946; and
`FURTHER ORDERED that the case caption in IPR2017-00946 shall
`be changed to reflect the joinder, in accordance with the attached example.
`
`PETITIONER:
`Heath J. Briggs
`Joshua L. Raskin
`William M. Fischer
`GREENBERG TRAURIG, LLP
`BriggsH@gtlaw.com
`RaskinJ@gtlaw.com
`FischerBi@gtlaw.com
`
`
`PATENT OWNER:
`Jennifer C. Bailey
`Adam P. Seitz
`ERISE IP, P.A.
`PTAB@eriseip.com
`Adam.Seitz@eriseip.com
`
`8
`
`

`

`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLIR SYSTEMS, INC.,
`FLIR MARITIME US, INC. (F/K/A RAYMARINE, INC.),
`and NAVICO, INC.,
`Petitioners,
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`Patent Owner.
`____________
`
`Case IPR2017-009461
`Patent 7,268,703 B1
`____________
`
`
`1 Navico, Inc. was joined as a party to this proceeding via a Motion for
`Joinder in IPR2017-02051.
`
`
`
`

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