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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`Abiomed, Inc., Abiomed R&D, Inc., and Abiomed Europe GmbH
`Petitioner
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`v.
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`Maquet Cardiovascular, LLC
`Patent Owner
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`Case No. IPR2017-02152
`Patent No. 8,888,728
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 37 C.F.R. § 42.122(B)
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`I.
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`RELIEF REQUESTED
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`Petitioners Abiomed, Inc., Abiomed R&D, Inc., and Abiomed Europe
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`GmbH (collectively, “Petitioner”) hereby moves for joinder of the petition for inter
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`partes review (“Petition”) of claims 1 and 6-8 of U.S. Patent No. 8,888,728 (the
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`“’728 patent”) submitted concurrently with this motion, with a pending inter partes
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`review submitted by Petitioner in IPR2017-01026.
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`II. APPLICABLE RULES
`37 C.F.R. § 42.122(b)
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`(b) Request for Joinder. Joinder may be requested by a patent owner or
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`petitioner. Any request for joinder must be filed, as a motion under § 42.22, no
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`later than one month after the institution date of any inter partes review for which
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`joinder is requested. The time period set forth in § 42.101(b) shall not apply when
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`the petition is accompanied by a request for joinder.
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`III. STATEMENT OF MATERIAL FACTS
`On May 19, 2016, Abiomed Inc. filed a declaratory judgment action against
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`Maquet Cardiovascular LLC (“Maquet” or “Patent Owner”) for non-infringement
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`of the ’728 patent in the District of Massachusetts. Case No. 1:16-cv-10914
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`(“Concurrent Litigation”)
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`On September 22, 2016, Maquet has filed its Answer and Counterclaims in
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`Concurrent Litigation asserting infringement of claims 1 and 10 of the ’728 patent
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`by Petitioner’s products.
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`1
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`On March 11, 2017, Petitioner has filed a petition for inter partes review of
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`claims 1-9 of the ’728 patent now styled Abiomed Inc., et al v. Maquet
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`Cardiovascular, LLC, Case No. IPR2017-01026.
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`On May 25, 2017, Maquet served its preliminary infringement contentions
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`in Concurrent Litigation identifying claims 1, 6-8, 10, and 15-17 of the ’728 patent.
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`On September 8, 2017, Petitioner served its invalidity contentions in
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`Concurrent Litigation for claims 1, 6-8, 10, and 15-17 of the ’728 patent.
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`On September 20, 2017, the Board issued a decision denying institution in
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`IPR2017-010261.
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`Petition presents new grounds for invalidity relying on the new prior art,
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`Sammler.
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`IV. DISCUSSION
` The Board has authority under 35 U.S.C. § 315(c) to join a properly-filed
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`second inter partes review petition to an instituted inter partes review proceeding.
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`A request for joinder must be filed “no later than one month after the
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`institution date of any inter partes review for which joinder is requested.” 37
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`C.F.R. § 42.122(b). The Board has found that a motion for joinder is timely if filed
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`prior to institution under this standard. See Blue Coat Systems, Inc. v. Finjan, Inc.,
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`IPR2016-00480, Paper 9 at *7 (PTAB June 24, 2016) (finding a “Petition and
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`1 Petitioner reserves the right to request rehearing of IPR2017-01026.
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`2
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`Motion for Joinder” filed prior to institution of the case for which joinder was
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`requested was “not untimely”); Taiwan Semiconductor Manufacturing Company,
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`LTD. v. Zond, LLC, IPR2014-00781, Paper 5 at *3 (PTAB May 29, 2014) (finding
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`that petitioner may file a motion seeking joinder to an inter partes review petition
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`that had not yet been instituted).
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`The one-year time bar of 35 U.S.C. § 315(b) does not apply to a request for
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`joinder. 35 U.S.C. § 315(b) (final sentence) (“[t]he time limitation set forth in the
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`preceding sentence shall not apply to a request for joinder under subsection (c)”);
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`37 C.F.R. § 42.122(b).
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`Although the Board issued a decision denying institution in IPR2017-01026,
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`the present Motion is still permitted under 37 C.F.R. § 42.122(b) and not untimely
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`because the Petitioner has the right to request a rehearing.
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`Joinder is appropriate when it results in the just, speedy, and inexpensive
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`resolution of proceedings. 37 C.F.R. § 42.1(b). In particular, the Board typically
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`grants joinder where the “same patents and parties are involved in both
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`proceedings,” there is “overlap in the cited prior art,” there is “no discernible
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`prejudice to either party,” petitioner is “diligent and timely in filing the motion,”
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`and there is no “undue delay.” Microsoft Corp. v. Proxyconn, Inc., IPR2013-
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`00109, Paper 15, at *3-4 (PTAB Feb. 25, 2013). See also ABB Inc. v. ROY-G-BIV
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`Corp., IPR2013-00282, Paper 15, at *3 (PTAB Aug. 9, 2013) and IPR2013-00286,
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`3
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`Paper 14, at *3 (PTAB Aug. 9, 2013) (granting joinder because the cases
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`“involve[] the same parties, the same patent, and much of the same prior art” and
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`the “prior art references . . . substantially overlap”); LaRose Indus. v. Capriola
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`Corp., IPR2013-00121, Paper 11, at *23-24 (PTAB Jun. 28, 2013) (granting
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`joinder in part because the cases “involve[d] the same patent and parties, and there
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`is some overlap in the asserted prior art . . . [and t]here also is no discernible
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`prejudice to either party”); Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc.,
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`IPR2013-00469, Paper 21, at *13-15 (PTAB Jan. 28, 2014) (granting joinder in
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`part because the cases “involve[d] the same patent, parties, and prior art[, and
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`t]here also is no discernible prejudice to either party”).
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`This Motion is filed by the same Petitioner, and Petition relies on
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`substantially overlapping prior art to challenge the same ’728 patent as in
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`IPR2017-01026. Further, this Motion presents no discernable prejudice to Patent
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`Owner because this timely filed Petition relies only on the previously-identified
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`prior art references and involves a narrowed subset of the claimed subject matter in
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`IPR2017-01026, allowing Patent Owner to efficiently prepare briefs and engage in
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`discovery without significant burden, expense, or delay.
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`V. CONCLUSION
`Based on the foregoing, the Petitioner respectfully requests that the above-
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`captioned review proceeding be instituted and joined with IPR2017-01026. Any
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`4
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`fees due in connection with this motion may be charged to Deposit Account No.
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`50-3672.
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`Respectfully Submitted,
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`___/David M. Tennant/______
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`David M. Tennant
`Registration No. 48,362
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`5
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`CERTIFICATE OF SERVICE
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`I, Daniel Shults, hereby certify that I am a resident of the State of Maryland
`and over the age of eighteen years, and not a party to the within action; my
`business address is 701 13th Street NW, #600, Washington, DC, 20005. On
`September 22, 2017, I caused the within documents:
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`• Petitioner’s Motion for Joinder Under 37 C.F.R. § 42.122(B)
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`to be served via FedEx on the attorney of record with the following
`correspondence address as listed on PAIR:
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`Getinge US Legal Shared Services
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`1300 MacArthur Boulevard
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`Mahwah NJ 07430
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`and to be served via FedEx on the designated representative of patent owner with
`the following correspondence address:
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`Michael S. Connor
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`Alston & Bird LLP
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`Bank of America Plaza
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`101 South Tryon Street, Suite 4000
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`Charlotte, NC 28280-4000
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`i
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`I declare that I am employed in the office the above captioned attorney at
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`whose direction the service was made.
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`__/s/ Daniel Shults
`Daniel Shults
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`ii
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