IPR2022-00217
`Paper 3
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`OHIO FARMERS INSURANCE COMPANY and PREGIS LLC,
`Petitioners
`
`v.
`GUADA TECHNOLOGIES LLC,
`Patent Owner
`_________________
`
`Case IPR2022-00217
`Patent No. 7,231,379
`_________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2021-00875
`
`
`
`1
`
`
`Paper 3
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`OHIO FARMERS INSURANCE COMPANY and PREGIS LLC,
`Petitioners
`
`v.
`GUADA TECHNOLOGIES LLC,
`Patent Owner
`_________________
`
`Case IPR2022-00217
`Patent No. 7,231,379
`_________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2021-00875
`
`
`
`1
`
`
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`IPR2022-00217
`Paper 3
`
`TABLE OF CONTENTS
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`I.
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 2
`A.
`Legal Standard ....................................................................................... 2
`B.
`Petitioner’s Motion for Joinder Is Timely ............................................. 3
`C.
`Each Factor Weighs in Favor of Joinder ............................................... 3
`1.
`Joinder with the Elastic IPR Is Appropriate ............................... 4
`2.
`Petitioners Propose No New Grounds of Unpatentability .......... 4
`3.
`Joinder Will Not Unduly Burden or Negatively Impact the
`Elastic IPR Trial Schedule .......................................................... 5
`Procedures to Simplify Briefing and Discovery ......................... 6
`4.
`IV. CONCLUSION ................................................................................................ 9
`
`
`
`
`
`
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`IPR2022-00217
`Paper 3
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Ohio Farmers Insurance Company d/b/a Westfield (“Westfield”) and Pregis
`
`LLC (“Pregis”) (collectively “Petitioners”) respectfully submit this Motion for
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`Joinder, together with a concurrently-filed Petition for Inter Partes Review of U.S.
`
`Patent No. 7,231,379 (“the Westfield-Pregis Petition”).
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners
`
`request institution of an inter partes review and joinder with Elastic NV v. Guada
`
`Technologies, LLC, IPR2021-00875 (“the Elastic IPR”), in which a decision
`
`instituting inter partes review was issued on October 28, 2021 (see Paper 7).
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`Petitioners’ request for joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`as it is submitted no later than one month after the institution date of the Elastic
`
`IPR. The Westfield-Pregis Petition is also narrowly tailored to the same claims,
`
`same prior art, and same grounds for unpatentability that are the subject of the
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`Elastic IPR. In addition, Petitioners are willing to streamline discovery and
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`briefing. In that regard, if Petitioners join the Elastic IPR, Petitioner will act as an
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`“understudy” and will not assume an active role unless the current petitioner ceases
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`to participate in the instituted IPR.
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`Petitioner submits that joinder is appropriate, as it will not unduly burden or
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`prejudice the parties to the Elastic IPR while efficiently resolving the question of
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`the ’379 Patent’s validity in this proceeding. Moreover, counsel for Petitioners
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`IPR2022-00217
`Paper 3
`have spoken with Elastic’s counsel in the Elastic IPR, and Elastic does not oppose
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`joinder by Petitioners.
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`II.
`
`STATEMENT OF MATERIAL FACTS
`On May 3, 2021, Elastic NV filed a petition for inter parties review
`1.
`
`(IPR2021-00875).
`
`2.
`
`On October 28, 2021, the Board instituted the Elastic IPR as to all
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`challenged claims and on all grounds.
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`3.
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`The Westfield-Pregis Petition and the Elastic IPR petition are
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`substantially identical; they contain the same grounds (based on the same prior art
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`combinations and supporting evidence) against the same claims.
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`4.
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`Elastic does not oppose this Motion for Joinder.
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`III.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
`Legal Standard
`A.
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
`
`inter partes review petition to an instituted inter partes review proceeding. See 35
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`U.S.C. § 315(c). A motion for joinder must be filed within one month of the Board
`
`instituting an original inter partes review. 37 C.F.R. § 42.122(b). In deciding
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`whether to exercise its discretion and permit joinder, the Board considers factors,
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`including: (1) the reasons why joinder is appropriate; (2) whether the new petition
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`presents any new grounds of unpatentability; (3) what impact, if any, joinder
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`
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`2
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`IPR2022-00217
`Paper 3
`would have on the trial schedule for the existing review; and (4) how briefing and
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`discovery may be simplified. See Kyocera Corporation v. Softview LLC, IPR2013-
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`00004, Paper 15 at 4 (PTAB Apr. 24, 2013).
`Petitioner’s Motion for Joinder Is Timely
`B.
`This Motion for Joinder is timely because it is filed within one month of the
`
`institution decision of the Elastic IPR (i.e., within one month of the October 28,
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`2021 institution decision). See 37 C.F.R. § 42.122(b).
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`Each Factor Weighs in Favor of Joinder
`C.
`All four factors weigh in favor of granting this Motion for Joinder. The
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`Westfield-Pregis Petition is substantively identical to the Elastic IPR petition.
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`Petitioner does not present any new grounds of unpatentability, and presents no
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`new evidence related to patentability. Additionally, as all issues are substantively
`
`identical and Petitioners will act as an “understudy,” joinder will have minimal or
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`no impact on the pending schedule of the Elastic IPR. See Sony Corp. et al. v.
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`Memory Integrity, LLC, IPR2015-01353, Paper No. 11 at 6 (PTAB Oct. 15, 2015)
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`(granting motion for joinder where petitioners requested an “understudy” role).
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`Moreover, the briefing and discovery will be simplified by resolving all issues in a
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`single proceeding. Accordingly, joinder is appropriate.
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`
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`3
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`IPR2022-00217
`Paper 3
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`1.
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`Joinder with the Elastic IPR Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`No. 12 at 9 (PTAB Aug. 24, 2016) (internal quotations and citations omitted).
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`Here, joinder with the Elastic IPR is appropriate because the Westfield-Pregis
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`Petition introduces the same prior art and the same grounds raised in the existing
`
`Elastic proceeding (i.e., challenges the same claims of the same patent, relies on
`
`the same expert declaration, and is based on the same grounds and combinations of
`
`prior art submitted in the Elastic IPR petition). Other than minor differences, such
`
`as differences related to the formalities of a different party filing the petition, there
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`are no changes to the facts, citations, evidence, or grounds introduced in the Elastic
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`IPR petition. Because these proceedings are substantively identical, good cause
`
`exists for joining this proceeding with the Elastic IPR so that the Board, consistent
`
`with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
`
`resolution” of the Westfield-Pregis Petition and Elastic IPR in a single proceeding.
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`2.
`
`Petitioners Propose No New Grounds of Unpatentability
`The Westfield-Pregis Petition is substantively identical to the Elastic IPR
`
`petition (i.e., challenging the same claims of the same patent, and on the same
`
`grounds and same combinations of prior art submitted in the Elastic IPR petition).
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`
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`4
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`IPR2022-00217
`Paper 3
`See Sony, Paper No. 11 at 5-6 (granting institution of IPR and motion for joinder
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`where petitioner relied “on the same prior art, same arguments, and same evidence,
`
`including the same expert and a substantively identical declaration”); see also Par
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`Pharm., Inc. v. Novartis AG, IPR2016-01023, Paper No. 20 at 14 (PTAB Oct. 27,
`
`2016) (granting motion for joinder where petitioners “do not assert any new
`
`ground of unpatentability that is not already being considered in [an instituted IPR
`
`proceeding], rely on the same arguments and evidence, and do not require any
`
`modification to the existing schedule”).
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Elastic IPR Trial Schedule
`Joinder will have minimal impact, if any, on the Elastic IPR trial schedule
`
`because the Westfield-Pregis Petition presents no new issues or grounds of
`
`unpatentability. See Sony, Paper No. 11 at 6 (granting IPR and motion for joinder
`
`where “joinder should not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required in [the original IPR]”). Further,
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`Petitioners Westfield and Pregis explicitly consent to the existing trial schedule.
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`There are no new issues for the Board to address, and Patent Owner will not be
`
`required to present any additional responses or arguments.
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`The Patent Owner’s Response will also not be negatively impacted because
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`the issues presented in the Westfield-Pregis Petition are identical to the issues
`
`presented in the Elastic IPR petition. Patent Owner will not be required to provide
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`5
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`IPR2022-00217
`Paper 3
`any additional analysis or arguments beyond what it will already provide in
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`responding to the petition in the Elastic IPR.
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`Accordingly, joinder with the Elastic IPR does not unduly burden or
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`negatively impact the trial schedule.
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`4.
`
`Procedures to Simplify Briefing and Discovery
`The Elastic IPR petition and the Westfield-Pregis Petition present
`
`substantively identical grounds of rejection, including the same art combinations
`
`against the same claims. Petitioners expressly agree to take a passive understudy
`
`role, as described by the Board:
`
`“(a) all filings by [Petitioners] in the joined proceeding [shall] be
`consolidated with [the filings of the petitioner in the Elastic IPR],
`unless a filing solely concerns issues that do not involve [the
`petitioner in the Elastic IPR]; (b) [Petitioners] shall not be permitted
`to raise any new grounds not already instituted by the Board in the
`[Elastic IPR], or introduce any argument or discovery not already
`introduced by [the petitioner in the Elastic IPR]; (c) [Petitioners] shall
`be bound by any agreement between [Patent Owner] and [the
`petitioner in the Elastic IPR] concerning discovery and/or depositions;
`and (d) [Petitioners] at deposition shall not receive any direct, cross-
`examination or redirect time beyond that permitted for [the petitioner
`in the Elastic IPR] alone under either 37 C.F.R. § 42.53 or any
`agreement between [Patent Owner] and [the petitioner in the Elastic
`IPR].”
`
`
`
`6
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`IPR2022-00217
`Paper 3
`See Mylan Pharm. Inc. v. Novartis AG and LTS Lohmann Therapie-Systeme AG,
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`IPR2014-00550, Paper 38 at 5 (PTAB Apr. 10, 2015) (emphasis in original).
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`Additionally, Petitioners will remain “completely inactive,” pursuant to the
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`Board’s discussion of an understudy role in Ericcson Inc. v. Uniloc 2017 LLC:
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`In our view, an “understudy role,” if taken by [joinder petitioner],
`means [joinder petitioner] will not be making any substantive filings
`and will be bound by whatever substantive filings [original petitioner]
`makes, so long as [original petitioner] remains a party in the
`proceeding. The same is true for oral hearing presentations. Also,
`[joinder petitioner] will not seek to take cross examination testimony
`of any witness or have a role in defending the cross-examination of a
`witness, so long as [original petitioner] remains a party in the
`proceeding. Likewise with other discovery matters. If and when
`[original petitioner’s] participation in the proceeding terminates,
`[joinder petitioner] can make its own filings as Petitioner. In short, in
`its “understudy role,” [joinder petitioner] will remain completely
`inactive, but for issues that are solely directed and pertinent to [joinder
`petitioner].
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`IPR2020-00376, Paper 8 at 3 (PTAB Jan. 21, 2020). Petitioners submit that it will
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`abide by the “completely inactive” role described by the Board and quoted above
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`in Ericcson. Thus, so long as Elastic remains a party in IPR2021-00875, if joinder
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`is permitted then Petitioners will agree to the following:
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`(i)
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`Petitioners will not make any substantive filings;
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`7
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`IPR2022-00217
`Paper 3
`Petitioners will not present any argument at the oral hearing or make
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`(ii)
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`any presentation at the oral hearing for the IPR;
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`(iii) Petitioners will not seek to take cross examination testimony of any
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`witness or have a role in defending the cross-examination of a witness in the IPR;
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`(iv) Petitioners will not seek discovery from Patent Owner in the IPR; and
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`(v)
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`Petitioners will otherwise remain completely inactive.
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`Petitioners will assume the primary role only if Elastic ceases to participate
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`in the Elastic IPR. Petitioner has conferred with counsel for Elastic, and Elastic
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`does not oppose joinder of Ohio Farmers Insurance Company and Pregis LLC in
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`“understudy” roles.
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`By Petitioners accepting “understudy” roles, Patent Owner and Elastic can
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`comply with the current trial schedule set by the Board and avoid any duplicative
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`efforts by the Board or the Patent Owner. These steps will minimize any potential
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`complications or delay that potentially may result by joinder. See Sony, Paper 11
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`at 6-7 (granting IPR and motion for joinder because “joinder would increase
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`efficiency by eliminating duplicative filings and discovery, and would reduce costs
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`and burdens on the parties as well as the Board” where petitioners agreed to an
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`“understudy” role.); see also id. at Paper 4 at 6-7.
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`8
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`IPR2022-00217
`Paper 3
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`IV. CONCLUSION
`For the at least the reasons stated above, Petitioner respectfully requests that
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`the Board institute trial on the Westfield-Pregis Petition and grant joinder with the
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`Elastic IPR proceeding.
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`Dated: November 22, 2021
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`
`
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`Respectfully submitted,
`
`
`
` / Jeff E. Schwartz /
`Jeff E. Schwartz
`Reg. No. 39,019
`Counsel for Petitioners
`
`
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`9
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`IPR2022-00217
`Paper 3
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a true copy of the foregoing Motion
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`for Joinder to Inter Partes Review IPR2021-00875 was served on Patent Owner on
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`November 22, 2021, via USPS Priority Mail, at the following addresses:
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`Morgan & Finnegan Transition Team
`c/o Locke Lord LLP
`P.O. BOX 55874
`Boston, MA 02205
`
`Guada Technologies LLC
`3000 Custer Rd, Suite 270-7058
`Plano, TX 75075
`
` A
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` courtesy copy of the foregoing Motion for Joinder to Inter Partes Review
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`IPR2021-00875 also was served electronically to Lead Counsel for Patent Owner
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`in IPR2021-00875 as follows:
`
`Sanjay Pant
`PRA Law
`2800 Bartons Bluff Lane #1902
`Austin, TX, 78746
`spant@pralawllc.com
`
` /Jeff E. Schwartz/
`Jeff E. Schwartz
`Reg. No. 39,019
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