`Tel: 571-272-7822
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`Paper No. 7
`Entered: June 6, 2018
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`
`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
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`Shenzhen Jiawei Photovoltaic Lighting Co, Ltd. (collectively, “Petitioner”)
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`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of
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`claims 1–12, 14–17, and 19–23 of U.S. Patent No. 8,201,968 B2 (Ex. 1001,
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`
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`IPR2018-00263
`Patent 8,201,968 B2
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`“the ’968 Patent”). Petitioner also filed a Motion for Joinder requesting that
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`we join Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
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`Shenzhen Jiawei Photovoltaic Lighting Co, Ltd. as parties with Technical
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`Consumer Products, Inc., Nicor Inc., and Amax Lighting in Tech. Consumer
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`Prods., Inc. v. Lighting Science Group Corp., Case IPR2017-01287 (“the
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`’1287 IPR”).1 Paper 3 (“Joinder Mot.”).
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`In the ’1287 IPR, we instituted an inter partes review as to claims 1–
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`12, 14–17, and 19–23 of the ’968 Patent on eight grounds of unpatentability.
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`’1287 IPR, Paper 10. According to Petitioner, the Petition filed in this
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`proceeding is “substantively identical” to the petition from the ’1287 IPR
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`and asserts identical arguments and grounds of unpatentability against the
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`same patent claims. Joinder Mot. 1–3. Petitioner also represents that, if it is
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`allowed to join the ’1287 IPR, it would agree to consolidated filing with
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`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting “to
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`minimize burden and schedule impact.” Id. at 4. Petitioner does not
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`indicate whether Technical Consumer Products, Inc. Nicor Inc. and Amax
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`Lighting oppose Petitioner’s Motion for Joinder.
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`Patent Owner, Lightning Science Group Corp. (“Patent Owner”), filed
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`neither a preliminary response nor a response to Petitioner’s Motion for
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`Joinder.
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`We have authority to determine whether to institute an inter partes
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`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
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`§ 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.
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`2
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`IPR2018-00263
`Patent 8,201,968 B2
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`in the petition and any preliminary response “shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” For the reasons that follow,
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`we institute an inter partes review as to claims 1–12, 14–17, and 19–23 of
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`the ’968 Patent on the same grounds instituted in totality in the ’1287 IPR.
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`We also grant Petitioner’s Motion for Joinder.
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`
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`
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`I. INSTITUTION OF INTER PARTES REVIEW
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`In the ’1287 IPR, we instituted an inter partes review as to claims 1–
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`12, 14–17, and 19–23 of the ’518 Patent on the following grounds of
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`unpatentability: (1) claims 1–4, 6, 14, and 15 under 35 U.S.C. § 102 as
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`anticipated by Chou;2 (2) claims 3, 4, and 19–23 under 35 U.S.C. § 103 as
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`unpatentable over Chou; (3) claims 7, 8, 11, and 12 under 35 U.S.C. § 103 as
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`unpatentable over Chou and Roberge;3 (4) claim 16 under 35 U.S.C. § 103
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`as unpatentable over Chou and Love;4 (5) claim 17 under 35 U.S.C. § 103 as
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`unpatentable over Chou and Wegner;5 (6) claims 1, 5, 9, 10, 14, 15, and 19–
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`23 under 35 U.S.C. § 103 as unpatentable over Soderman6 and Silescent;7
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`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”).
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`3
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`IPR2018-00263
`Patent 8,201,968 B2
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`(7) claim 11 under 35 U.S.C. § 103 as unpatentable over Soderman,
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`Silescent, and Roberge; and (8) claim 17 under 35 U.S.C. § 103 as
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`unpatentable over Soderman, Silescent, and Wegner. ’1287 IPR, Paper 10.
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`As mentioned above, the Petition filed in this proceeding is essentially the
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`same as the Petition filed in the ’1287 IPR, and Petitioner limited the
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`asserted grounds in this proceeding to only those grounds originally
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`instituted in the ’1287 IPR. Joinder Mot. 1–3, 6–7; compare Pet. 3–63, with
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`’1287 IPR, Paper 1, 3–63.
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`The Petition is essentially the same as and only pertains to the
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`originally instituted grounds in the ’1287 IPR. We conclude that the
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`information presented in the Petition establishes that there is a reasonable
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`likelihood that Petitioner would prevail on its assertion that (1) claims 1–4,
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`6, 14, and 15 under 35 U.S.C. § 102 as anticipated by Chou; (2) claims 3, 4,
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`and 19–23 under 35 U.S.C. § 103 as unpatentable over Chou; (3) claims 7, 8,
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`11, and 12 under 35 U.S.C. § 103 as unpatentable over Chou and Roberge;
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`(4) claim 16 under 35 U.S.C. § 103 as unpatentable over Chou and Love; (5)
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`claim 17 under 35 U.S.C. § 103 as unpatentable over Chou and Wegner; (6)
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`claims 1, 5, 9, 10, 14, 15, and 19–23 under 35 U.S.C. § 103 as unpatentable
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`over Soderman and Silescent; (7) claim 11 under 35 U.S.C. § 103 as
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`unpatentable over Soderman, Silescent, and Roberge; and (8) claim 17 under
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`35 U.S.C. § 103 as unpatentable over Soderman, Silescent, and Wegner.
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`Pursuant to § 314, we institute an inter partes review as to these
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`claims of the ’968 Patent on the same grounds instituted in the ’1287 IPR for
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`the reasons stated in our Institution Decision from the ’1287 IPR. See ’1287
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`IPR, Paper 10.
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`4
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`IPR2018-00263
`Patent 8,201,968 B2
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`II. GRANTING PETITIONER’S MOTION FOR JOINDER
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`The AIA created administrative trial proceedings, including inter
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`partes review, as an efficient, streamlined, and cost-effective alternative to
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`district court litigation. 35 U.S.C. § 315(c) provides (emphasis added):
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`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.
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`“Any request for joinder must be filed, as a motion under § 42.22, no later
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`than one month after the institution date of any inter partes review for which
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`joinder is requested.” 37 C.F.R. § 42.122(b). Joinder may be authorized
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`when warranted, but the decision to grant joinder is discretionary. See
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`35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board determines whether to
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`grant joinder on a case-by-case basis, taking into account the particular facts
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`of each case, substantive and procedural issues, and other considerations.
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`See Sony Corp. of Am. v. Network-1 Security Solutions, Inc., Case
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`IPR2013-00495, slip op. at 3 (PTAB Sept. 16, 2013) (Paper 13) (“Sony”).
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`When exercising its discretion, the Board is mindful that patent trial
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`regulations, including the rules for joinder, must be construed to secure the
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`just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C.
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`§ 316(b); 37 C.F.R. § 42.1(b).
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`As the moving party, Petitioner has the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
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`A motion for joinder should (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new ground(s) of unpatentability asserted in the
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`5
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`IPR2018-00263
`Patent 8,201,968 B2
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`petition; and (3) explain what impact (if any) joinder would have on the trial
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`schedule for the existing review. See Sony at 3. Petitioner should address
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`specifically how briefing and/or discovery may be simplified to minimize
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`schedule impact. See Kyocera Corp. v. SoftView LLC, Case IPR2013-
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`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15) (representative).
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`Petitioner’s Motion is timely because it was filed on November 30,
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`2017, which is within one month of our November 1, 2017, institution of the
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`’1287 IPR. See 37 C.F.R. § 42.122 (“Any request for joinder must be filed,
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`as a motion under § 42.22, no later than one month after the institution date
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`of any inter partes review for which joinder is requested.”); Joinder Mot. 1.
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`In its Motion for Joinder, Petitioner contends that joinder is
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`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
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`present any new prior art, grounds of unpatentability, exhibits, or
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`arguments.” Joinder Mot. 3. In particular, Petitioner “relies on the same
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`expert declaration and other supporting exhibits, and asserts the same
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`combinations of prior art upon which the Board has instituted inter partes
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`review.” Id. at 4–5. Petitioner further argues that joinder will not impact the
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`schedule of the ’1287 IPR, particularly because the instant Petition “presents
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`no new issues or arguments for Patent Owner[] or the Board to consider.”
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`Id. at 5.
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`Petitioner (“Joinder Petitioners” below) also agrees to be bound by the
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`following conditions in its “understudy” role if it is joined to the ’1287 IPR:
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`(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;
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`6
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`IPR2018-00263
`Patent 8,201,968 B2
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`(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.
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`Id. at 6–7.
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`Given that Petitioner agrees to consolidated filings and discovery, we
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`conclude Petitioner has demonstrated that joinder will result in efficiency
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`and will not unduly complicate or delay the ’1287 IPR.
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`Based on all of the considerations above, we are persuaded that
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`Petitioner has met its burden of demonstrating that joinder is warranted
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`under the circumstances, so we grant Petitioner’s Motion for Joinder.
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`Petitioner will have a limited role in the ’1287 IPR subject to the conditions
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`set forth above. If at some point the ’1287 IPR is terminated with respect to
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`Technical Consumer Products, Inc., Nicor Inc., or Amax Lighting, the roles
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`of the remaining parties in the proceeding may be reevaluated.
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`
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`Accordingly, it is:
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`III. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
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`instituted as to claims 1–12, 14–17, and 19–23 of the ’968 Patent on the
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`following grounds of unpatentability:
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`7
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`IPR2018-00263
`Patent 8,201,968 B2
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`Claims 1–4, 6, 14, and 15 of the ’968 Patent as anticipated by Chou
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`pursuant to 35 U.S.C. § 102;
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`Claims 3, 4, and 19–23 of the ’968 Patent as obvious over Chou
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`pursuant to 35 U.S.C. § 103;
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`Claims 7, 8, 11, and 12 of the ’968 Patent as obvious over Chou and
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`Roberge pursuant to 35 U.S.C. § 103;
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`Claim 16 of the ’968 Patent as obvious over Chou and Love pursuant
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`to 35 U.S.C. § 103;
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`Claim 17 of the ’968 Patent as obvious over Chou and Wegner
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`pursuant to 35 U.S.C. § 103;
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`Claims 1, 5, 9, 10, 14, 15, and 19–23 of the ’968 Patent as obvious
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`over Soderman and Silescent pursuant to 35 U.S.C. § 103;
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`Claim 11 of the ’968 Patent under 35 U.S.C. § 103 Soderman,
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`Silescent, and Roberge pursuant to 35 U.S.C. § 103; and
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`Claim 17 of the ’968 Patent as obvious over Soderman, Silescent, and
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`Wegner pursuant to 35 U.S.C. § 103.
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`FURTHER ORDERED that inter partes review is commenced on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is hereby given of the institution of a trial;
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`FURTHER ORDERED that the trial is limited to the grounds of
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`unpatentability listed above, and no other grounds of unpatentability are
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`authorized for inter partes review;
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
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`Case IPR2017-01287 is granted, and Petitioner is joined as a party to Case
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`IPR2017-01287;
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`8
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`IPR2018-00263
`Patent 8,201,968 B2
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`FURTHER ORDERED that Case IPR2018-00263 is instituted, joined,
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`and subsequently terminated under 37 C.F.R. § 42.72, and all further filings
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`in the joined proceeding shall be made in Case IPR2017-01287;
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`FURTHER ORDERED that the case caption in Case IPR2017-01287
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`shall henceforth list Petitioner as a Petitioner entity and include a footnote
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`reflecting the joinder of IPR2018-00263 with Case IPR2017-01287;
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`FURTHER ORDERED that the Scheduling Order entered in
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`IPR2017-01287 shall remain in effect and govern the proceeding, subject to
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`any schedule changes agreed to by the parties in IPR2017-01287 pursuant to
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`the Scheduling Order;
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`FURTHER ORDERED that Petitioner’s participation in the briefing,
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`depositions, and oral argument of the joined proceedings shall be subject to
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`the acquiescence of Technical Consumer Products, Inc., Nicor Inc., and
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`Amax Lighting to Petitioner’s participation and, absent our express
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`authorization, Petitioner shall not file papers or exhibits apart from
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`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting;
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`FURTHER ORDERED that, absent our express authorization to the
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`contrary, Petitioner shall be bound by the conditions set forth on pages 6–7
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`the Motion for Joinder (Paper 3) from IPR2017-00263 and reproduced
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`above, so long as Technical Consumer Products, Inc., Nicor Inc., or Amax
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`Lighting remains a party to IPR2017-01287; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the file of Case IPR2017-01287.
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`9
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`IPR2018-00263
`Patent 8,201,968 B2
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`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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