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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SINCLAIR PHARMA LIMITED, SINCLAIR PHARMA US, INC., VIORA,
`INC., EMA AESTHETICS, LTD., AND AESTHETIC MANAGEMENT
`PARTNERS, LLC AND AESTHETIC MANAGEMENT PARTNERS, INC.
`Petitioner,
`
`v.
`
`HYDRAFACIAL LLC,
`Patent Owner.
`_____________
`
`Case No. IPR2025-00145
`Patent No. 11,865,287
`_____________
`
`CONTINGENT UNOPPOSED MOTION FOR JOINDER UNDER
` 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO INTER PARTES REVIEW IPR2024-01491
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`PRELIMINARY STATEMENT ....................................................................... 1
`I.
`II. STATEMENT OF MATERIAL FACTS .......................................................... 2
`III. STATEMENT OF RELIEF REQUESTED ...................................................... 3
`A. Legal Standard ............................................................................................. 3
`B. Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder ....................................................................................... 4
`1. Joinder with the Eunsung IPR is Appropriate ....................................... 5
`2. Petitioner Does Not Propose New Grounds of Unpatentability ........... 6
`3. No Impact on the Eunsung IPR Trial Schedule .................................... 7
`4. Briefing and Discovery Will Be Simplified .......................................... 8
`IV. CONCLUSION ................................................................................................ 11
`
`
`
`
`i
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`TABLE OF AUTHORITIES
`
`
`CASES
`Blue Coat Systems, Inc. v. Finjan, Inc.,
`IPR2016-00480, Paper No. 9 (PTAB June 24, 2016) ............................................ 1
`
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
` IPR2013-00385, Paper No. 17 (PTAB July 29, 2013) .......................................... 4
`Everlight Elecs. Co. Ltd., v. Document Security Sys., Inc.,
`IPR2018-01260, Paper No. 12 (PTAB Nov. 14, 2018)......................................6, 7
`Mylan Pharms. Inc. v. Novartis AG,
`IPR2015-00268, Paper No. 17 (PTAB Apr. 10, 2015) ........................................ 10
`
`Par Pharm., Inc. v. Novartis AG,
`IPR2016-01023, Paper No. 20 (PTAB Oct. 27, 2016) ........................................... 7
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (PTAB Aug. 24, 2016).......................................... 5
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC,
`IPR2018-01383, Paper No. 9 (PTAB Nov. 19, 2018)............................................ 5
`Sony Corporation v. Memory Integrity, LLC,
`IPR2015-01353, Paper No. 11 (PTAB Oct. 5, 2015) .................................. 4, 7, 10
`STATUTES
`35 U.S.C. § 315(c) .................................................................................................1, 4
`35 U.S.C. § 316(a)(11) ............................................................................................... 8
`REGULATIONS
`37 C.F.R. § 42.1(b) .................................................................................................... 6
`37 C.F.R. § 42.100(c) ................................................................................................. 8
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`37 C.F.R. § 42.53 ..................................................................................................... 10
`
`ii
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`
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`37 C.F.R. § 42.22 ....................................................................................................... 1
`37 CFR. § 42.22 vcecccsssecsccsssscsscessssessssssesesessssvessssssvecsesssvsesesssssesesssssessensusessessaseesesssees 1
`
`
`
`iii
`ill
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`
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`I.
`
`PRELIMINARY STATEMENT
`Sinclair Pharma Limited, Sinclair Pharma US, Inc., Viora, Inc., EMA
`
`Aesthetics, Ltd., Aesthetic Management Partners, LLC and Aesthetic Management
`
`Partners, Inc. (collectively, “Petitioner” ) respectfully submit this Motion for
`
`Joinder, together with a Petition for Inter Partes Review of U.S. Patent No.
`
`11,865,287 (“the AMP Petition”) filed concurrently herewith. Pursuant to 35
`
`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner requests institution of an
`
`inter partes review and joinder with the inter partes review in Eunsung Global
`
`Corp. v. HydraFacial LLC, IPR2024-01491 (“the Eunsung IPR”).
`
`Petitioner’s Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and
`
`42.122(b) as the Board has not yet issued an institution decision in the Eunsung
`
`IPR, therefore, the Petition and Motion satisfy the requirement of the request being
`
`filed no later than one month from institution of a trial. Blue Coat Systems, Inc. v.
`
`Finjan, Inc., IPR2016-00480, Paper No. 9 at 7 (PTAB June 24, 2016) (granting
`
`motion for joinder and rejecting patent owner’s contention that joinder motion filed
`
`before institution motion was premature). The AMP Petition is also narrowly
`
`tailored to the same challenged claims, prior art, and grounds for unpatentability
`
`that are the subject of the Eunsung IPR.
`
`Petitioner submits that joinder is appropriate because it will not unduly
`
`burden or prejudice the parties to the Eunsung IPR while efficiently resolving the
`
`1
`
`
`
`
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`question of the validity of U.S. Patent No. 11,865,287 (the “’287 patent”) in a
`
`single proceeding.
`
`In the alternative, to the extent that IPR2024-01491 terminates prior to the
`
`Board’s decision on this Motion for Joinder, rendering this Motion moot, AMP
`
`respectfully requests that the Board evaluate its Petition on the merits.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`On June 11, 2024, Patent Owner filed an infringement action against
`
`Eunsung Global Corp. (“Eunsung”), Certain Hydrodermabrasion Systems and
`
`Components Thereof, Inv. No. 337-TA-1408 (ITC). On August 16, 2024, Patent
`
`Owner filed another infringement action against Eunsung, HydraFacial LLC v.
`
`Luvo Medical Technologies et al, 2-24-cv-00587 (DUT).
`
`2.
`
`On July 8, 2024, Patent Owner filed an infringement action against
`
`Aesthetic Management Partners, LLC and Aesthetic Management Partners, Inc. ,
`
`HydraFacial LLC f/k/a Edge Systems LLC v. Aesthetic Management Partners, LLC
`
`et al, 2-24-cv-02480 (W.D. Tenn.). On August 2, 2024, Patent Owner filed another
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`infringement action against Aesthetic Management Partners, LLC in the ITC,
`
`Certain Hydrodermabrasion Systems and Components Thereof, Inv. No. 337-TA-
`
`1416 (ITC).
`
`3.
`
`On July 24, 2024, Patent Owner filed an infringement action against
`
`Sinclair Pharma Limited, Sinclair Pharma US, Inc. and Viora, Inc., HydraFacial
`
`2
`
`
`
`
`
`LLC f/k/a Edge Systems LLC v. Sinclair Pharma Limited et al, 2-24-cv-06250
`
`(C.D. Cal.). On August 2, 2024, Patent Owner filed another infringement action
`
`against Sinclair Pharma Limited and Sinclair Pharma US, Inc. in the ITC, Certain
`
`Hydrodermabrasion Systems and Components Thereof, Inv. No. 337-TA-1416
`
`(ITC).
`
`4.
`
`On September 30, 2024, Eunsung filed a petition for inter partes
`
`review (IPR2024-01491) (“the Eunsung Petition”) requesting cancellation of
`
`claims 1-12, 14-20, 22-26, 28-37, and 39-45 of the ’287 patent.
`
`5.
`
`The Eunsung Petition and the AMP Petition are substantively
`
`identical; they contain the same grounds (based on the same prior art combinations
`
`and supporting evidence) against the same claims and rely on the same evidence,
`
`including an expert declaration that adopts the relevant portions of the expert
`
`declaration submitted in the Eunsung IPR.
`
`6.
`
`Petitioner has conferred with counsel for Eunsung and confirmed that
`
`it does not oppose this motion.
`
`III. STATEMENT OF RELIEF REQUESTED
`A. Legal Standard
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
`
`inter partes review petition with another inter partes review proceeding. See 35
`
`U.S.C. § 315(c). The Board, in determining whether to exercise its discretion to
`
`3
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`
`
`
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`grant joinder, considers whether the joinder motion: (1) sets forth the reasons why
`
`joinder is appropriate; (2) identifies any new grounds of unpatentability asserted in
`
`the petition; (3) explains what impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) addresses specifically how briefing and
`
`discovery may be simplified. Dell, Inc. v. Network-1 Security Solutions, Inc.,
`
`IPR2013-00385, Paper No. 17 at 4 (PTAB July 29, 2013).
`
`B.
`
`Each of the Factors Weighs in Favor of the Board Granting
`the Motion for Joinder
`All four factors weigh in favor of granting the motion for Petitioner. The
`
`AMP Petition is substantively identical to the Eunsung Petition. Petitioner does not
`
`present any new grounds of unpatentability, consistent with PTAB joinder practice.
`
`Additionally, as all substantive issues are identical and Petitioner will act as an
`
`“understudy,” joinder should have no impact on the pending schedule of the
`
`Eunsung IPR. See Sony Corporation v. Memory Integrity, LLC, IPR2015-01353,
`
`Paper No. 11 at 6 (PTAB Oct. 5, 2015) (granting motion for joinder where
`
`petitioners requested an “understudy” role); see also Samsung Electronics
`
`America, Inc. v. Uniloc 2017 LLC, IPR2018-01383, Paper No. 9 at 4-5 (PTAB
`
`Nov. 19, 2018) (granting motion for joinder). Moreover, the briefing and discovery
`
`will be simplified by resolving all issues in a single proceeding. Accordingly,
`
`joinder is appropriate.
`
`4
`
`
`
`
`
`1.
`Joinder with the Eunsung IPR is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
`
`No. 12 at 9 (PTAB Aug. 24, 2016) (emphasis in original) (internal quotations and
`
`citations omitted). Here, joinder with the Eunsung IPR is appropriate because the
`
`AMP Petition submits identical arguments and the same grounds introduced in the
`
`existing Eunsung IPR, consistent with PTAB joinder practice.
`
`More specifically, the AMP Petition copies verbatim the challenges set forth
`
`in the Eunsung Petition and relies on an expert declaration that adopts the relevant
`
`portions of the expert declaration submitted in the Eunsung IPR. The only
`
`differences between the AMP Petition and the Eunsung Petition relate to
`
`formalities of a different party filing the petition; there are no other changes to the
`
`facts, citations, evidence, or arguments introduced in the Eunsung Petition. While
`
`the AMP Petition relies on a declaration from a different expert witness, AMP’s
`
`expert reviewed and adopted the relevant portions of the expert declaration
`
`supporting Eunsung’s IPR, and AMP’s expert declaration does not include any
`
`new or additional opinions. See Everlight Elecs. Co. Ltd., v. Document Security
`
`Sys., Inc., IPR2018-01260, Paper No. 12 at 6-7 (PTAB Nov. 14, 2018) (granting
`
`motion for joinder where petitioner submitted separate but substantially identical
`
`5
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`
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`expert declaration). Moreover, assuming that Eunsung does not terminate its IPR
`
`before its expert is deposed, Petitioner waives their expert declaration and agrees to
`
`be bound by the declaration(s) and deposition(s) of Eunsung’s expert. Because
`
`these proceedings are virtually identical, good cause exists for joining this
`
`proceeding with the Eunsung 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
`
`AMP Petition and the Eunsung Petition in a single proceeding.
`
`Moreover, granting joinder will not prejudice Patent Owner or the current
`
`petitioner, Eunsung. As discussed above, the AMP Petition does not raise any new
`
`ground that is not raised in the Eunsung Petition. Therefore, there should be little
`
`or no additional cost to Patent Owner or Eunsung due to AMP’s joinder. Petitioner
`
`has conferred with counsel for Eunsung and confirmed that it does not oppose this
`
`motion.
`
`2.
`
`Petitioner Does Not Propose New Grounds of
`Unpatentability
`As discussed above, the AMP Petition does not assert any new grounds of
`
`patentability. It challenges the same claims of the ’287 patent based on the same
`
`arguments, substantially the same evidence, and the same grounds of
`
`unpatentability as the Eunsung IPR. See Sony, IPR2015-01353, Paper No. 11 at 5-6
`
`(granting institution of IPR and motion for joinder where petitioners relied “on the
`
`same prior art, same arguments, and same evidence, including the same expert and
`
`6
`
`
`
`
`
`a substantively identical declaration”); Everlight, IPR2018-01260, Paper No. 12 at
`
`6-7 (granting motion for joinder where petitioner “asserts the same unpatentability
`
`grounds” and “relies on the same prior art analysis [even] though it relies on a
`
`different expert”) (emphasis added); see also Par 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.
`No Impact on the Eunsung IPR Trial Schedule
`Joinder should have no impact on the Eunsung IPR trial schedule because
`
`the AMP Petition presents no new issues or grounds of unpatentability. See Sony,
`
`IPR2015-01353, 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]”). There are no new
`
`issues for the Board to address, and Patent Owner will not be required to present
`
`any additional responses or arguments. Moreover, once issued, Petitioner will
`
`adhere to all deadlines set by the Board’s Scheduling Order for the Eunsung IPR.
`
`The Patent Owner’s Response will not be impacted because the issues
`
`presented in the AMP Petition are identical to the issues presented in the Eunsung
`
`7
`
`
`
`
`
`Petition. Patent Owner will not be required to provide any additional analysis or
`
`arguments beyond what, if anything, it will already provide in responding to the
`
`Eunsung Petition.
`
`Additionally, no additional expert discovery will be needed. While the AMP
`
`Petition relies on a declaration from a different expert witness, Petitioner’s expert
`
`has reviewed and adopts the relevant portions of the expert declaration submitted
`
`in the Eunsung IPR. Assuming Eunsung does not terminate its IPR before its
`
`expert is deposed, Petitioner agrees to rely entirely on, and be bound by, the expert
`
`declaration(s) and deposition(s) in the Eunsung IPR, and Petitioner waives its own
`
`expert declaration. Accordingly, if Eunsung does not terminate its IPR
`
`prematurely, there will be no need for any deposition of AMP’s expert.
`
`Accordingly, joinder of Petitioner to the Eunsung IPR will not affect the
`
`Board’s ability to complete its review and final decision within the statutory time
`
`limits under 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
`
`4.
`Briefing and Discovery Will Be Simplified
`Petitioner agrees to a complete and silent “understudy” role and will not
`
`raise any issues. Specifically, Petitioner agrees that, if joined, the following
`
`conditions shall apply so long as Eunsung remains an active party. These
`
`conditions are less burdensome on the Patent Owner and lead petitioner than
`
`8
`
`
`
`
`
`conditions that have been previously approved by the Board in similar
`
`circumstances:
`
`a) All substantive filings will be consolidated, for which Eunsung will
`
`maintain responsibility (i.e., Petitioner will rely on the filings of
`
`Eunsung), unless a filing solely concerns issues that do not involve
`
`Eunsung (e.g., Mandatory Notices);
`
`b) Petitioner shall rely on the grounds instituted by the Board in the
`
`Eunsung IPR, and the arguments and discovery introduced by
`
`Eunsung; Petitioner shall not be permitted to raise any new grounds
`
`not already instituted by the Board in the Eunsung IPR, or introduce
`
`any argument or discovery not already introduced by Eunsung;
`
`c) Petitioner shall be bound by any agreement between Patent Owner
`
`and Eunsung concerning discovery and/or depositions; and
`
`d) Petitioner at deposition shall not request any direct, cross examination
`
`or redirect time beyond that permitted for Eunsung alone under either
`
`37 C.F.R. § 42.53 or any agreement between Patent Owner and
`
`Eunsung. See Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268,
`
`Paper No. 17 at 5-6 (PTAB Apr. 10, 2015) (finding the same proposed
`
`limitations “are consistent with the ‘understudy’ role that Petitioner
`
`agrees to assume, as well as Petitioner’s assertion that its presence
`
`9
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`
`
`
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`would not require introducing any additional arguments, briefing, or
`
`discovery.”).
`
`e) Petitionrs agree to be bound by the expert deposition(s) and
`
`declaration(s) of Eunsung’s expert and Petitioner waives its own
`
`expert declaration, unless Eunsung ceases to be an active participant
`
`in its IPR prior to Eunsung’s expert’s deposition.
`
`In short, Petitioner agrees to participate in the joined proceedings as an
`
`“understudy” and would assume an active role only if Eunsung is dismissed from
`
`the joined proceedings or elects to transfer control to Petitioner.
`
`Thus, by Petitioner accepting an “understudy” role, Patent Owner and
`
`Eunsung can comply with the existing trial schedule without needing any
`
`duplicative efforts by the Board or the Patent Owner. These steps will minimize
`
`any potential complications or delay that potentially may result by joinder. See
`
`Sony, IPR2015-01353, Paper No. 11 at 6-7 (granting IPR and motion for joinder
`
`because “joinder would increase efficiency by eliminating duplicative filings and
`
`discovery, and would reduce costs and burdens on the parties as well as the Board”
`
`where petitioners agreed to an “understudy” role). Petitioner is further willing to
`
`agree to any other reasonable conditions the Board deems necessary.
`
`10
`
`
`
`
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`grant its Petition for Inter Partes Review of the ’287 patent and that the
`
`proceedings be joined with IPR2024-01491.
`
`
`Date: November 25, 2024
`
`
`
`Respectfully submitted,
`
`/ Scott A. McKeown/
`Scott A. McKeown, Reg. No. 42,866
`WOLF, GREENFIELD & SACKS, P.C.
`601 Massachusetts Avenue NW
`Washington, DC 20001
`
`Roberto J. Fernandez, Reg. No. 73,761
`FOLEY & LARDNER LLP
`321 North Clark Street, Suite 3000
`Chicago, IL 60654
`
`
`Counsel for Petitioner
`
`11
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`
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on November 25, 2024, I will cause a copy of the foregoing
`
`document, including any exhibits or appendices filed therewith, to be served via
`
`Overnight FedEx at the following correspondence address of record for the patent:
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`
` courtesy copy was also sent via electronic mail to all counsel of record in
`
` A
`
`IPR2024-01491 at the following addresses:
`
`
`Ali S. Razai
`Craig S. Summers
`Benjamin J. Everton
`Benjamin B. Anger
`
`
`
`
`
`2AZR@knobbe.com
`2CSS@knobbe.com
`2BJE@knobbe.com
`2BBA@knobbe.com
`BoxEDGEL255@knobbe.com
`
`Jeremy J. Monaldo
`Sangki Park
`
`Jay Zhu
`
`
`
`
`
`
`
`
`
`
`
`monaldo@fr.com
`spark@fr.com
`jzhu@fr.com
`IPR58484-0001IP1@fr.com
`PTABInbound@fr.com
`
`
`
`
`
`
`
`
`
`
`
`Date: November 25, 2024
`
`
`
`
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`
`
`
`
`
`/Dara Del Rosario/
`Dara Del Rosario
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
`
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