throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 7
`Entered: June 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JIAWEI TECHNOLOGY (HK) LTD.,
`JIAWEI TECHNOLOGY (USA) LTD., and
`SHENZHEN JIAWEI PV LIGHTING CO., LTD.,
`Petitioner,
`
`
`
`
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00263
`Patent 8,201,968 B2
`____________
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`TURNER, 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. § 42.122
`
`Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
`
`Shenzhen Jiawei Photovoltaic Lighting Co, Ltd. (collectively, “Petitioner”)
`
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of
`
`claims 1–12, 14–17, and 19–23 of U.S. Patent No. 8,201,968 B2 (Ex. 1001,
`
`

`

`IPR2018-00263
`Patent 8,201,968 B2
`
`“the ’968 Patent”). Petitioner also filed a Motion for Joinder requesting that
`
`we join Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
`
`Shenzhen Jiawei Photovoltaic Lighting Co, Ltd. as parties with Technical
`
`Consumer Products, Inc., Nicor Inc., and Amax Lighting in Tech. Consumer
`
`Prods., Inc. v. Lighting Science Group Corp., Case IPR2017-01287 (“the
`
`’1287 IPR”).1 Paper 3 (“Joinder Mot.”).
`
`In the ’1287 IPR, we instituted an inter partes review as to claims 1–
`
`12, 14–17, and 19–23 of the ’968 Patent on eight grounds of unpatentability.
`
`’1287 IPR, Paper 10. According to Petitioner, the Petition filed in this
`
`proceeding is “substantively identical” to the petition from the ’1287 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 ’1287 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 4. 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
`
`
`1 In IPR2018-00269, Leedarson Lighting Co., Ltd. and Leedarson America,
`Inc. also filed a motion for joinder related to the ’1287 IPR. We grant that
`motion concurrent with this Decision, as discussed below. See infra § II.
`
`2
`
`
`

`

`IPR2018-00263
`Patent 8,201,968 B2
`
`in the petition and any preliminary response “shows that there is a
`
`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 1–12, 14–17, and 19–23 of
`
`the ’968 Patent on the same grounds instituted in totality in the ’1287 IPR.
`
`We also grant Petitioner’s Motion for Joinder.
`
`
`
`
`
`I. INSTITUTION OF INTER PARTES REVIEW
`
`In the ’1287 IPR, we instituted an inter partes review as to claims 1–
`
`12, 14–17, and 19–23 of the ’518 Patent on the following grounds of
`
`unpatentability: (1) claims 1–4, 6, 14, and 15 under 35 U.S.C. § 102 as
`
`anticipated by Chou;2 (2) claims 3, 4, and 19–23 under 35 U.S.C. § 103 as
`
`unpatentable over Chou; (3) claims 7, 8, 11, and 12 under 35 U.S.C. § 103 as
`
`unpatentable over Chou and Roberge;3 (4) claim 16 under 35 U.S.C. § 103
`
`as unpatentable over Chou and Love;4 (5) claim 17 under 35 U.S.C. § 103 as
`
`unpatentable over Chou and Wegner;5 (6) claims 1, 5, 9, 10, 14, 15, and 19–
`
`23 under 35 U.S.C. § 103 as unpatentable over Soderman6 and Silescent;7
`
`
`2 U.S. Patent No. 7,670,021 B2 (filed May 20, 2008) (issued Mar. 2, 2010)
`(Ex. 1010, “Chou”).
`3 U.S. Patent No. 7,828,465 B2 (filed May 2, 2008) (issued Nov. 9, 2010)
`(Ex. 1011, “Roberge”).
`4 U.S. Patent No. 6,616,291 B1 (filed Dec. 20, 2000) (issued Sep. 9, 2003)
`(Ex. 1015, “Love”).
`5 U.S. Patent No. 7,993,034 B2 (filed Sep. 22, 2008) (issued Aug. 9, 2011)
`(Ex. 1021, “Wegner”).
`6 U.S. Patent No. 7,980,736 B2 (filed Nov. 13, 2007) (issued Jul. 19, 2011)
`(Ex. 1013, “Soderman”).
`7 Silescent Lighting Corp., Silescent S100 LP2 Product Sheet and
`Installation Guide (Jun. 2009) (Ex. 1014, “Silescent”).
`
`3
`
`
`

`

`IPR2018-00263
`Patent 8,201,968 B2
`
`(7) claim 11 under 35 U.S.C. § 103 as unpatentable over Soderman,
`
`Silescent, and Roberge; and (8) claim 17 under 35 U.S.C. § 103 as
`
`unpatentable over Soderman, Silescent, and Wegner. ’1287 IPR, Paper 10.
`
`As mentioned above, the Petition filed in this proceeding is essentially the
`
`same as the Petition filed in the ’1287 IPR, and Petitioner limited the
`
`asserted grounds in this proceeding to only those grounds originally
`
`instituted in the ’1287 IPR. Joinder Mot. 1–3, 6–7; compare Pet. 3–63, with
`
`’1287 IPR, Paper 1, 3–63.
`
`The Petition is essentially the same as and only pertains to the
`
`originally instituted grounds in the ’1287 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 1–4,
`
`6, 14, and 15 under 35 U.S.C. § 102 as anticipated by Chou; (2) claims 3, 4,
`
`and 19–23 under 35 U.S.C. § 103 as unpatentable over Chou; (3) claims 7, 8,
`
`11, and 12 under 35 U.S.C. § 103 as unpatentable over Chou and Roberge;
`
`(4) claim 16 under 35 U.S.C. § 103 as unpatentable over Chou and Love; (5)
`
`claim 17 under 35 U.S.C. § 103 as unpatentable over Chou and Wegner; (6)
`
`claims 1, 5, 9, 10, 14, 15, and 19–23 under 35 U.S.C. § 103 as unpatentable
`
`over Soderman and Silescent; (7) claim 11 under 35 U.S.C. § 103 as
`
`unpatentable over Soderman, Silescent, and Roberge; and (8) claim 17 under
`
`35 U.S.C. § 103 as unpatentable over Soderman, Silescent, and Wegner.
`
`Pursuant to § 314, we institute an inter partes review as to these
`
`claims of the ’968 Patent on the same grounds instituted in the ’1287 IPR for
`
`the reasons stated in our Institution Decision from the ’1287 IPR. See ’1287
`
`IPR, Paper 10.
`
`4
`
`
`

`

`IPR2018-00263
`Patent 8,201,968 B2
`
`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
`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
`
`5
`
`
`

`

`IPR2018-00263
`Patent 8,201,968 B2
`
`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 November 30,
`
`2017, which is within one month of our November 1, 2017, institution of the
`
`’1287 IPR. See 37 C.F.R. § 42.122 (“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.”); Joinder Mot. 1.
`
`In its Motion for Joinder, Petitioner contends that joinder is
`
`appropriate because the instant Petition “is substantively identical to the
`
`Original Petition as to the subset of claims and grounds at issue and does not
`
`present any new prior art, grounds of unpatentability, exhibits, or
`
`arguments.” Joinder Mot. 3. In particular, Petitioner “relies on the same
`
`expert declaration and other supporting exhibits, and asserts the same
`
`combinations of prior art upon which the Board has instituted inter partes
`
`review.” Id. at 4–5. Petitioner further argues that joinder will not impact the
`
`schedule of the ’1287 IPR, particularly because the instant Petition “presents
`
`no new issues or arguments for Patent Owner[] or the Board to consider.”
`
`Id. at 5.
`
`Petitioner (“Joinder Petitioners” below) also agrees to be bound by the
`
`following conditions in its “understudy” role if it is joined to the ’1287 IPR:
`
`(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;
`
`6
`
`
`

`

`IPR2018-00263
`Patent 8,201,968 B2
`
`(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.
`
`Id. at 6–7.
`
`Given that Petitioner agrees to consolidated filings and discovery, we
`
`conclude Petitioner has demonstrated that joinder will result in efficiency
`
`and will not unduly complicate or delay the ’1287 IPR.
`
`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 ’1287 IPR subject to the conditions
`
`set forth above. If at some point the ’1287 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.
`
`
`
`Accordingly, it is:
`
`III. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`
`instituted as to claims 1–12, 14–17, and 19–23 of the ’968 Patent on the
`
`following grounds of unpatentability:
`
`7
`
`
`

`

`IPR2018-00263
`Patent 8,201,968 B2
`
`Claims 1–4, 6, 14, and 15 of the ’968 Patent as anticipated by Chou
`
`pursuant to 35 U.S.C. § 102;
`
`Claims 3, 4, and 19–23 of the ’968 Patent as obvious over Chou
`
`pursuant to 35 U.S.C. § 103;
`
`Claims 7, 8, 11, and 12 of the ’968 Patent as obvious over Chou and
`
`Roberge pursuant to 35 U.S.C. § 103;
`
`Claim 16 of the ’968 Patent as obvious over Chou and Love pursuant
`
`to 35 U.S.C. § 103;
`
`Claim 17 of the ’968 Patent as obvious over Chou and Wegner
`
`pursuant to 35 U.S.C. § 103;
`
`Claims 1, 5, 9, 10, 14, 15, and 19–23 of the ’968 Patent as obvious
`
`over Soderman and Silescent pursuant to 35 U.S.C. § 103;
`
`Claim 11 of the ’968 Patent under 35 U.S.C. § 103 Soderman,
`
`Silescent, and Roberge pursuant to 35 U.S.C. § 103; and
`
`Claim 17 of the ’968 Patent as obvious over Soderman, Silescent, and
`
`Wegner pursuant to 35 U.S.C. § 103.
`
`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;
`
`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 IPR2017-01287 is granted, and Petitioner is joined as a party to Case
`
`IPR2017-01287;
`
`8
`
`
`

`

`IPR2018-00263
`Patent 8,201,968 B2
`
`FURTHER ORDERED that Case IPR2018-00263 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 IPR2017-01287;
`
`FURTHER ORDERED that the case caption in Case IPR2017-01287
`
`shall henceforth list Petitioner as a Petitioner entity and include a footnote
`
`reflecting the joinder of IPR2018-00263 with Case IPR2017-01287;
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2017-01287 shall remain in effect and govern the proceeding, subject to
`
`any schedule changes agreed to by the parties in IPR2017-01287 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 IPR2017-00263 and reproduced
`
`above, so long as Technical Consumer Products, Inc., Nicor Inc., or Amax
`
`Lighting remains a party to IPR2017-01287; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the file of Case IPR2017-01287.
`
`
`
`9
`
`
`

`

`IPR2018-00263
`Patent 8,201,968 B2
`
`PETITIONER:
`
`Mark C. Nelson
`Daniel A. Valenzuela
`Kevin R. Greenleaf
`DENTONS US LLP
`Mark.Nelson@Dentons.com
`Daniel.Valenzuela@Dentons.com
`Kevin.Greenleaf@Dentons.com
`
`
`PATENT OWNER:
`
`Garret A. Leach
`Eric D. Hayes
`Eugene Goryunov
`Kyle M. Kantarek
`KIRKLAND & ELLIS LLP
`garret.leach@kirkland.com
`eric.hayes@kirkland.com
`eugene.goryunov@kirkland.com
`kyle.kantarek@kirkland.com
`
`
`10
`
`
`

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