Standard Innovation Corporationv.LELO, Inc.

Patent Trial and Appeal Board

Dec 1, 2014

11344987 (P.T.A.B. Dec. 1, 2014)

Trials@uspto.gov Paper 10
571-272-7822 Entered: December 1, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

STANDARD INNOVATION CORPORATION,
Petitioner,

v.

LELO, INC.,
Patent Owner.
_______________

Case IPR2014-00907
Patent 7,749,178 B2
_______________

Before PHILLIP J. KAUFFMAN, JACQUELINE WRIGHT BONILLA,
and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION
Denying Petitioner’s Motion for Joinder,
and Denying Institution of Inter Partes Review
37 C.F.R. §§ 42.108, 42.122

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I. INTRODUCTION
Petitioner, Standard Innovation Corporation, filed a Petition for Inter
Partes Review (Paper 1, “Pet.”) of claims 9, 13, and 25–27 of U.S. Patent
No. 7,749,178 (Ex. 1001, “the ’178 patent”), and concurrently filed a Motion
for Joinder (Paper 3, “Mot. Join.”). The Motion for Joinder seeks to join this
proceeding to Case IPR2014-00148 (“the 148 IPR”). The 148 IPR is a
challenge to the ’178 patent involving the same parties. Patent Owner, Lelo,
Inc., timely filed an Opposition to the Motion for Joinder (Paper 6, “Opp. to
Joinder”), and subsequently filed a Preliminary Response (Paper 9, “Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314.
For the reasons below, we determine that Petitioner has not shown
that joinder is warranted in this instance. Consequently, we dismiss the
Petition.
1

1
We recognize the difference of opinion that currently exists as to whether
the Board has discretion under 35 U.S.C. § 315(c) to allow joinder of a
person to an ongoing inter partes review when, as here, that person is
already a party to the ongoing inter partes review. Cf. Target Corp. v.
Destination Maternity Corp., Case IPR2014-00508 (PTAB Sept. 25, 2014)
(Paper 18); Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022
(PTAB Sept. 2, 2014) (Paper 166). Even if 35 U.S.C. § 315(c) does not
permit joinder of a person to an ongoing inter partes review when that
person is already a party to the ongoing inter partes review, the outcome in
this case would be the same.
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II. TIMELINESS
The Petition was filed on June 5, 2014, more than one year after
Petitioner was served with a complaint alleging infringement of the ’178
patent.
2
In such circumstances, an inter partes review ordinarily may not be
instituted. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). An exception to
this one-year time bar exists in the case of a request for joinder that is filed
within one month of institution of the proceeding sought to be joined. See
35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). The 148 IPR
was instituted on May 6, 2014, and Petitioner filed its Joinder Motion on
June 5, 2014. Consequently, we may consider whether joinder is
appropriate in this case.

III. JOINDER
Joinder may be authorized when warranted, but the decision to grant
joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
Petitioner, as the moving party, carries the burden of proof. 37 C.F.R.
§ 42.20(c). In evaluating this joinder request, we analyze the content of the
Petition, the impact on schedule including how Petitioner proposes to deal
with that impact, and other factors.

A. Content
The Petition seeks review of the five claims (9, 13, 25–27) that were
denied institution in the 148 IPR. Such a petition is sometimes referred to as

2
Petitioner was served with the relevant complaint on March 28, 2013.
Standard Innovation Corp., v. Lelo, Inc., Case IPR2014-00148, slip op. at 2
(Paper 7) (“148 Decision to Institute”).
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a “second bite at the apple.”
3
Neither the Petition nor the Motion for Joinder
presents cogent argument or evidence to explain why the grounds of
unpatentability asserted in the Petition could not have been asserted in the
148 IPR.
Specifically, the Petition at hand asserts the following grounds of
unpatentability under 35 U.S.C. § 103 (Pet. 7–8):
Claim(s)
challenged
References
9 Lily
4
, Dahl
5
, Kontos
6
, and Applicant Admitted Prior Art
7

9 Lily, Dahl, Kontos, and Boyd
8

9 Den Boer and Dahl
13, 25–27 Lily, Dahl, and Kontos
13, 25–27 Den Boer, Dahl, and Kontos

3
See e.g., Medtronic, Inc. and Medtronic Vascular, Inc. v. Endotach LLC,
Case IPR2014-00695, slip op. at 3 (PTAB Sept. 25, 2014).
4
Specification Sheet, LELOi AB, Introducing LILY,
http://www.lelo.com/staticPage.php?page=10years screenshots
(“Lily”) (Ex. 1002).
5
U.S. Patent No. 3,938,018 (Feb. 10, 1976) (Ex. 1005).
6
U.S. Patent No. 6,350,230 B1 (Feb. 26, 2002) (Ex. 1003).
7
Petitioner contends that Apitzsch, U.S. Patent Pub. No. 2005/0075072
(Apr. 7, 2005) and Firouzgar, U.S. Patent Pub. No. 2003/0195441 (Oct. 16,
2003) are Applicant Admitted Prior Art. Pet. 8, 21, 26–27.
8
U.S. Patent Pub. 2002/0065477 (May 30, 2002) (Ex. 1008).
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The 148 IPR addressed the following grounds of unpatentability under
35 U.S.C. § 103, as raised in the Petition in that proceeding
9
:
Claims
challenged
Claims
instituted
Claims not
instituted
References
1–8, 13–20, and
22–27
1–8, 14–20,
and 22–24
13, 25–27 Lily, Dahl, and Kontos
10–12 10–12 Lily, Dahl, Kontos, and
McCambridge
1–8, 13–17, 19,
20, and 22–24
1–8, 13–17, 19,
20, and 22–24
Klein and Dahl
10–12 10–12 Klein, Dahl, and
McCambridge
1–4, 7–9, 13–
20, and 22–27
1–4, 7–9, 13–
20, and 22–27
Den Boer and Dahl
10–12 10–12 Den Boer, Dahl, and
McCambridge
In the IPR 148, we instituted inter partes review on the asserted
grounds that (1) claims 1–8, 14–20, and 22–24 would have been obvious
over Lily, Dahl, and Kontos; and (2) claims 10–12 would have been obvious
over Lily, Dahl, Kontos, and McCambridge. 148 Decision to Institute, 26.
We did not institute trial on any asserted grounds in relation to claims 9, 13,
or 25–27 of the ’178 patent. Id. at 2.
The instant Petition presents asserted grounds of unpatentability that
differ from those presented in the 148 IPR in several ways. Specifically,
with regard to claim 9, the ground of unpatentability based upon Den Boer
and Dahl has been modified from the version presented in the 148 IPR in
that it provides a rationale for combining the embodiments of Den Boer. Cf.
Pet. 31–33; 148 Decision to Institute, 24–25. The other two grounds of

9
148 Decision to Institute at 7, 26; Standard Innovation Corp., v. Lelo, Inc.,
Case IPR2014-00148, slip op. at 7 (Paper 2) (“148 IPR Petition”).
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unpatentability against claim 9 include Boyd, Apitzsch, and Firouzgar,
references that were not relied upon in the grounds of unpatentability
presented in the 148 IPR.
Regarding claims 13 and 25–27, the supporting evidence and rationale
of the ground of unpatentability based upon Lily, Dahl, and Kontos differ
from the version of this ground that was denied institution in the 148 IPR.
Compare Pet. 35–38; Ex. 1009 ¶ 58 with 148 IPR Pet. 29–30, 33–37, Ex.
1010 ¶¶ 124, 196. The other ground of unpatentability asserted against
claims 13 and 25–27 is based upon Den Boer, Dahl, and Kontos, a
combination that was not presented in the 148 IPR.
In an attempt to explain why the Petition should not be rejected under
35 U.S.C. § 325(d), Petitioner generally acknowledges the distinctions noted
here by conceding that the “petition presents combinations of prior art
references and arguments not previously presented or considered by the
Board.” Mot. Join. 5, 7; see also 35 U.S.C. § 325(d) (“the Director may take
into account whether, and reject the petition or request because, the same or
substantially the same prior art or arguments previously were presented to
the Office.”).
Regarding the claimed subject matter at issue, claim 9 adds the
limitation that the massager apparatus includes a remote control for
wirelessly controlling the operation of the massager. Ex. 1001, 18:36–38.
Claim 13 contains the limitation that the first and second coupler are
positioned to generate heat palpable on the surface of the massager housing
when the massager housing is positioned on the base housing to charge the
rechargeable battery. Id. at 18:50–54. Claims 25–27 contain a similar
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limitation. Id. at 19:34–20:38. As noted above, in the 148 Decision to
Institute, we did not institute inter partes review of claims 9, 13, or 25–27,
or any other claims directed to the subject matter recited in those claims.
In sum, joinder could significantly expand the 148 IPR. For example,
the number of claims involved could increase from 21 to 26, the number of
asserted grounds of unpatentability involved could increase from two to
seven, and the number of references involved could increase from four to
eight. Thus, we and both parties would need to address additional claimed
subject matter, references, and combinations of references as detailed above.
With this proposed expansion in mind, we analyze the potential effect on the
schedule of the 148 IPR.

B. Schedule
Generally, Petitioner contends that joinder will not impact the Board’s
ability to complete the 148 IPR in a timely manner and will not unduly delay
the proceedings. Mot. Join. 8–9. Petitioner enumerates several factors in
support of this contention. Mot. Join. 8–11. We analyze these factors
individually before turning to the schedule offered by Petitioner.
Petitioner asserts that the asserted grounds of the Petition can be
considered expeditiously because we have previously considered claims 9,
13, and 25–27. Mot. Join. 9–10. Petitioner also contends that little if any
additional discovery will be required because Petitioner uses the same expert
for this Petition as for the 148 IPR. Mot. Join. at 10. Although we
appreciate that those two factors may promote some efficiency, that
efficiency is outweighed by the many ways, as detailed in section III.A.
above, that joinder would expand the 148 IPR.
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Petitioner reasons that because the claims challenged in this Petition
were originally challenged in the 148 IPR and because the 148 IPR will be
completed in a year that, therefore, the 148 IPR could still be completed
within a year if those claims are restored to that proceeding. Mot. Join. at
10. Petitioner’s assertion implies the Motion for Joinder simply restores the
148 IPR to considering what it was originally asked to consider. This is not
the case. First, as detailed in section III.A. above, the Petition differs from
the 148 IPR in several respects, including adding asserted grounds and art
not considered in the 148 IPR. Second, Petitioner’s logic ignores that the
148 IPR has progressed with regard to the instituted claims and has not
progressed with respect to the claims the Petition at hand seeks to add.
Petitioner notes that the period of time for the joint proceeding could
be reduced if Patent Owner elects to waive its preliminary response to the
Petition. Mot. Join. at 10. This contention is no longer relevant because, as
noted above, Patent Owner submitted a Preliminary Response (i.e., did not
elect to waive).
Petitioner provides a proposed schedule for the 148 IPR that alters
Due Dates 1–5 and keeps Due Dates 6 and 7 the same. Mot. Join. at 10–11.
The 148 IPR, however, has progressed since Petitioner’s proposed schedule
was submitted. Petitioner’s proposal should be considered in the current
context of the 148 IPR.
The 148 IPR was instituted on May 6, 2014. The proceeding has now
been on-going for over six months. The initial conference call and Due
Dates 1–3 have passed. See Standard Innovation Corp., v. Lelo, Inc., Case
IPR2014-00148 (Papers 8, 10). The Patent Owner’s Response and
Petitioner’s Reply to that Response each have been filed. See Id. (Papers 12,
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22). Two witnesses have been deposed. See Id. (Papers 17, 18). The Oral
argument, if requested, is scheduled for January 9, 2015, less than two
months from the issuance of this decision. Petitioner’s proposed schedule
does not address convincingly how the Petition could be joined to the 148
IPR without significantly impacting the schedule of the 148 IPR.
In sum, Petitioner’s contention that joinder will not impact the
Board’s ability to complete the 148 IPR in a timely manner and without
undue delay is not well supported. To the contrary, as detailed above,
joinder would significantly lengthen the 148 IPR. Petitioner implicitly
acknowledges this impact by stating repeatedly that the schedule of the 148
IPR may be adjusted in the case of joinder. See, e.g., Mot. Join. 6, 9, 11, 12
(citing 37 C.F.R. 42.100(c)). We are aware that the schedule may be
adjusted in the case of joinder, but such an assertion does little to explain
why lengthening of the 148 IPR is warranted.

C. Other Factors
Petitioner asserts that there is no discernable prejudice to either party
if the proceedings are joined. Mot. Join. at 7. Specifically, Petitioner
contends that joinder “raises no issues that would affect the timing in a way
that would adversely affect the patent owner or require substantial additional
cost or analysis beyond that which is already involved in IPR2014-00148.”
Mot. Join. 12. This conclusory assertion is unpersuasive. As detailed above,
the Petition seeks to add asserted grounds, art, and arguments that could
significantly lengthen the 148 IPR. These same factors would also increase
notably cost and effort by Patent Owner and the Board.
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Petitioner also asserts that absent joinder, Petitioner “may be
prejudiced because it may be forced to defend itself in pending litigation
involving otherwise invalid patent claims.” Mot. Join. at 2. Petitioner’s
assertion in this regard is unpersuasive as entirely speculative at this time.
Moreover, Petitioner’s assertion presumes that we necessarily would
institute inter partes review based on asserted grounds raised in the instant
Petition, and that we would ultimately conclude that Petitioner establishes by
a preponderance of the evidence that all challenged claims are unpatentable
based on grounds raised in that Petition. We have not made a determination
regarding patentability of the challenged claims of the ’178 patent in this
proceeding, or with regard to the claims at issue in the 148 IPR.
Petitioner asserts that “[d]etermining the same validity questions
concerning the ’178 Patent in multiple consecutive proceedings would
duplicate efforts and create a risk of inconsistent results.” Mot. Join. at 11.
This assertion is based upon the false premise that there will be two
proceedings. It is not possible that denying the Joinder Motion will result in
multiple proceedings, because the Petition is time barred under 35 U.S.C.
§ 315 (b) in that situation, i.e., the instant case cannot proceed if we deny the
Joinder Motion. Further, given the differences in the asserted grounds of
unpatentability, arguments, and references detailed above, Petitioner fails to
explain cogently how the Petition at hand presents the same patentability
questions that are at issue in the 148 IPR.
Further, as mentioned above, we are mindful that Petitioner has not
provided a cogent reason why the grounds of unpatentability asserted in the
Petition could not have been asserted in the 148 IPR.

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IV. CONCLUSION
Petitioner presents no persuasive argument or evidence to explain why
the grounds of unpatentability asserted in the Petition could not have been
asserted in the 148 IPR. Joinder would likely significantly increase the
complexity, time, and cost of the 148 IPR, and Petitioner’s contentions
regarding dealing with such considerations are unpersuasive. Although the
time period for completion of the 148 IPR may be adjusted in the case of
joinder, Petitioner has not demonstrated why that is warranted in this case.
Consequently, we deny the Motion for Joinder.
Petitioner also asks that we consolidate the Petition with the 148 IPR.
See e.g., Mot. Join. 1. Petitioner treats joinder and consolidation as
interchangeable; however, such is not the case. As we noted above, the
Petition was filed more than one year after Petitioner was served with a
complaint alleging infringement of the ’178 patent. The exception to the
one-year time bar under § 315(b) applies to requests for joinder, but not
consolidation. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.122(a)–(b). Thus,
Petitioner’s request for consolidation does not avoid the § 315(b) bar.

V. ORDER
Accordingly, it is
ORDERED that the Joinder Motion is denied; and
FURTHER ORDERED that the Petition is denied.

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PETITIONER:

Robert Lord
lord@oshaliang.com

Lisa E. Margonis
margonis@oshaliang.com

Tammy Terry
terry@oshaliang.com

PATENT OWNER:

Robert Hulse
rhulse@fenwick.com

Hector Ribera
hribera@fenwick.com