The NOCO Company

Patent Trials and Appeals Board

May 10, 2021

IPR2021-00309 (P.T.A.B. May. 10, 2021)

Trials@uspto.gov Paper 11
571-272-7822 Date: May 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GUANGDONG BOLTPOWER ENERGY CO. LTD.,
Petitioner,

v.

THE NOCO COMPANY
Patent Owner.
____________

IPR2021-00309
Patent 9,007,015 B1
____________

Before JAMESON LEE, DAVID C. McKONE, and
JASON M. REPKO, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

Denying Motion for Joinder
35 U.S.C. § 315(c); 37 C.F.R. § 42.122

IPR2021-00309
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I. INTRODUCTION
On December 11, 2020, Guangdong Boltpower Energy Co. Ltd.
(“Petitioner” or “Boltpower”) filed a Petition for inter partes review of all claims
1–23 in U.S. Patent 9,007,015 B1 (Ex. 1001, “the ’015 patent”). Paper 2 (“Pet.”).
On that same date, Petitioner also filed a Motion for Joinder to join inter partes
review proceeding Shenzen Carku Tech. Co., Ltd. v. The NOCO Company, Inc.,
IPR2020-00944, which challenges 22 of the 23 same claims from the ’015 patent.
Paper 3 (“Mot.”).1 The NOCO Company (“Patent Owner”) filed an Opposition to
Petitioner’s Motion for Joinder. Paper 6 (“PO Opp.”). Shenzen Carku Technology
Co. Ltd. (“Carku”), the petitioner in IPR2020-00944, also filed an Opposition to
Boltpower’s Motion for Joinder. IPR2020-00944, Paper 26 (“Carku Opp.”).
Petitioner filed a consolidated Reply to Patent Owner and Carku’s
oppositions to the Motion for Joinder. Paper 9 (“Reply”). Petitioner then filed a
Corrected Reply, which removed a representation appearing on page 3 of the
Reply. Paper 10 (“Corr. Reply”).
For reasons discussed below, we exercise delegated discretion under
35 U.S.C. § 314(a) not to institute inter partes review, and deny the Petition. Also,
we deny the Motion for Joinder as well as the Supplemental Motion for Joinder.
A. Related Matters
Petitioner and Patent Owner indicate that the ’015 patent is the subject of
several court proceedings (see Pet. ¶¶ 182–183; Paper 5), and inter partes review
proceedings. The inter partes review proceedings are:

1 On January 26, 2021, Petitioner filed a Supplemental Motion for Joinder to
clarify what it means by taking an “understudy role” in the joined proceeding.
Paper 8 (“Supp. Mot.”). This filing was authorized by the Board and not opposed
by either Patent Owner or Carku. Paper 7, 4.
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1) Dongguan Juxing Power Co. Ltd. v. The NOCO Company, IPR2018-
00503;2
2) Shenzen Carku Tech. Co., Ltd. v. The NOCO Company, IPR2020-00944;3
and
3) Shenzen Mediatek Tong Tech. Co., Ltd. v. The NOCO Company,
IPR2020-01387.4
II. DISCUSSION
Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS
Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the
Director with discretion on the question whether to institute review . . . .”
(emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
(2016) (“[T]he agency’s decision to deny a petition is a matter committed to the
Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes
the trial on behalf of the Director.”). “[T]he PTO is permitted, but never
compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc.,
815 F.3d 1356, 1367 (Fed. Cir. 2016).
Regarding joinder, the U.S. Court of Appeals for the Federal Circuit has
instructed that the relevant statutory provision of 35 U.S.C. § 315(c) “requires” the
consideration of “two different decisions.” Facebook, Inc. v. Windy City
Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). First, we decide
“whether the joinder applicant’s petition for IPR ‘warrants’ institution under
§ 314.” Id. Second, if the petition warrants institution, we may then determine
whether to “join as a party” the joinder applicant. Id. Therefore, before
determining whether to join Petitioner as a party to IPR2020-00944, we first

2 The Board denied institution on July 11, 2018. IPR2018-00503, Paper 9.
3 The Board instituted review on November 12, 2020. IPR2020-00944, Paper 20.
4 The Board denied institution on February 5, 2021. IPR2020-01387, Paper 9.
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determine whether we should exercise discretion to deny the Petition under
35 U.S.C. § 314(a).
Petitioner has filed “[m]ultiple, staggered petitions challenging the same
patent and same claims”, which “raises the potential for abuse.” General Plastic
Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 17 (Sept.
6, 2017) (precedential as to § II.B.4.i). Dongguan Juxing Power Co. Ltd., the
denied petitioner of IPR2018-00503, is the same entity as Boltpower, the present
Petitioner. Pet. ¶ 184 (“Dongguan Juxing Power Co., Ltd. is the former name of
the Petitioner Guangdong Boltpower Energy Co., Ltd.”) (emphasis added); Exs.
2002–2003. Petitioner is filing a “follow-on” Petition here with respect to its
previously denied petition in IPR2018-00503. In General Plastic, the Board
applied seven factors in determining whether to exercise discretion under
35 U.S.C. § 314(a) to deny “follow-up petitions after the Board’s denial of one or
more first-filed petitions on the same patent.” General Plastic, Paper 19 at 15.
Those seven factors are:
1) whether the same petitioner previously filed a petition directed to the
same claims of the same patent;
2) whether at the time of filing of the first petition the petitioner knew of the
prior art asserted in the second petition or should have known of it;
3) whether at the time of filing of the second petition the petitioner already
received the patent owner’s preliminary response to the first petition or
received the Board’s decision on whether to institute review in the first
petition;
4) the length of time that elapsed between the time the petitioner learned of
the prior art asserted in the second petition and the filing of the second
petition;
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5) whether the petitioner provides adequate explanation for the time elapsed
between the filings of multiple petitions directed to the same claims of
the same patent;
6) the finite resources of the Board; and
7) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which the Director
notices institution of review.
Id. at 9−10.
1. “whether the same petitioner previously filed a petition directed to the
same claims of the same patent”
Boltpower is the same petitioner who filed a previous petition in IPR2018-
00503 on January 15, 2018, against claims 1–21 and 23 of the ’015 patent.
IPR2018-00503, Paper 2. Pet. ¶ 184 (“Dongguan Juxing Power Co., Ltd. is the
former name of the Petitioner Guangdong Boltpower Energy Co., Ltd.”). The
same claims 1–21 and 23 are challenged here, and the Petition additionally
challenges claim 22. Patent Owner argues that “with 22 out of 23 claims attacked
in common, this factor plainly weighs against joinder [and institution].” PO Opp.
7. Carku makes the same argument. Carku Opp. 4. In reply, Petitioner admits that
“this factor disfavors institution” but submits that it “carries less weight” where the
Petition is accompanied by a Motion for Joinder in which it is indicated that
Petitioner will take an “understudy” role in the joined proceeding.5 Corr. Reply 2.

5 An “understudy” for joinder is bound by the papers filed by the original
petitioner, except for settlement and other matters relating solely to that original
petitioner. The understudy also cannot file any substantive papers, unless the
original petitioner settles. The understudy is also “not entitled to any time at oral
argument, conference calls, and cross-examination of witnesses, unless the original
petitioner has settled.” Paper 7, 2–3.
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We are not persuaded by Petitioner’s argument. In another proceeding,
essentially the same argument was raised by the petitioner there, Apple Inc.,
attempting to join an already-instituted inter partes review proceeding filed by
Microsoft Corp. Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 at 4, 8-
10 & 12 (Oct. 28, 2020) (precedential). There, the Board found the argument
unpersuasive, because should the initial petitioner settle, the joined petitioner
“would stand in to continue a proceeding that would otherwise be terminated” and
it would “be as if [the joined petitioner] had brought the second challenge to the
patent in the first instance”, raising the “potential abuse” for “serial attack[s]” that
General Plastic was intended to address. Id. at 4. We follow the same reasoning
and determine that this first factor weighs against institution.
2. “whether at the time of filing of the first petition the petitioner
knew of the prior art asserted in the second petition or
should have known of it”
In weighing this second factor, the Board in Uniloc 2017 stated that it could
not “presume Petitioner’s knowledge of the prior art” asserted in the second
petition and that the main issue for them was that Apple, Inc. had “failed to set
forth facts or offer an explanation concerning its knowledge, at the time it filed the
first petition, of the prior art asserted [in the second petition].” IPR2020-00854,
Paper 9 at 9 (emphasis added). Because of the lack of explanation, the Board
concluded in Uniloc 2017 that this second factor weighed against institution. Id.
Both Patent Owner and Carku utilize the reasoning from Uniloc 2017 to
argue that Petitioner “has not explained” its knowledge of the prior art asserted in
the current petition at the time it filed its first petition. PO Opp. 8; Carku Opp. 4.
However, the circumstance is not the same. Petitioner has provided pertinent
explanation. Petitioner states that “the only common references [between] the first
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[and second] petition[s] are Krieger and Baxter”6, which are also “secondary
references in the current petition” and further alleges that “[b]efore the filing of the
Carku Petition, [it] did not have knowledge of either of the primary references,
namely, Richardson and Klang”7 and “[n]either did [it] have prior knowledge of
the other supporting references, namely, Lei, Wanzong, Epower-20 brochure, and
Epower-21 brochure before the filing [of] the Carku Petition.”8 Corr. Reply 2-3.
The implicit representation from Petitioner is that upon Carku’s filing of the
petition in IPR2020-00944, Petitioner first became aware of Richardson, Klang,
Lei, Wanzong, Epower-20, and Epower-21.9
On this record, the evidence does not support a finding that at the time of
filing of the petition in IPR2020-00944, Petitioner knew or should have known of
any of Richardson, Klang, Lei, Wanzong, Epower-20, and Epower-21. The second
General Plastic factor weighs in favor of institution.
3. “whether at the time of filing of the second petition the petitioner
already received the patent owner’s preliminary response to the first
petition or received the Board’s decision on whether to institute
review in the first petition”
Petitioner acknowledges that this factor “disfavors institution” but avers that
it “carries less weight” when the petition is accompanied by a Motion for Joinder.

6 Krieger et al., U.S. Patent Application Publication No. US 2004/0130298 A1
(“Krieger”); Baxter et al., WO Publication No. 2010/129723 (“Baxter”).
7 Richardson et al., U.S. Patent Application Publication No. 2013/0154543 A1
(“Richardson”); Klang, U.S. Patent No. 6,424,158 B2 (“Klang”).
8 Lei, U.S. Patent No. 9,954,391 B2 (“Lei”); Wanzong et al., U.S. Patent No.
5,319,298 A (“Wanzong”); Carku Product Brochure for the Epower-20 jump
starter product (“Epower-20”); Carku Product Brochure for the Epower-21 jump
starter product (“Epower-21”).
9 Because Petitioner does not expressly state when it learned of the prior art
references but only states that prior to filing of the petition in IPR2020-00944 it
was unaware of certain references, it is presumed to have learned of those certain
references on the date of filing of the petition in IPR2020-00944, May 14, 2020.
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Corr. Reply 3. This is the same “carries less weight” argument we discussed and
rejected above in the context of the first factor. For the same reasons, it is equally
without merit here in the context of the third factor.
Patent Owner and Carku both assert that this factor favors denial of
institution because Petitioner received both Patent Owner’s Preliminary Response
to the first petition, as well as the Board’s decision denying institution of review
for that first petition, more than two years before it filed its second petition. PO
Opp. 8; Carku Opp. 4–5.10 We agree. Petitioner had the opportunity to review the
preliminary response and the Board’s non-institution decision in IPR2018-00503
prior to filing the second petition twenty eight months after the Board denied the
petition in IPR2018-00503. Petitioner here is the same entity as the petitioner in
IPR2018-00503. Pet. ¶ 184. The third factor weighs against institution.
4. “the length of time that elapsed between the time the petitioner
learned of the prior art asserted in the second petition and the filing
of the second petition”
Petitioner asserts that this factor “favors institution” because it “acted strictly
within the short time frame . . . under the rules” by filing the current petition within
one month of the November 12, 2020, institution of the Carku IPR2020-00944
proceeding. Corr. Reply 4. Petitioner also asserts that “[t]here was no delay
between the time Petitioner first learned of the primary references in the Carku
Petition and the time it filed the second petition and motion for joinder.” Id.
Petitioner’s argument referring to compliance with 37 C.F.R. § 42.122(b),
which requires filing of a joinder request no later than one month after the date of
institution of the inter partes review for which joinder is requested, is misplaced.

10 The preliminary response in IPR2018-00503 was filed on May 7, 2018.
IPR2018-00503, Paper 8. The decision not to institute in IPR2018-00503 issued
on July 11, 2018. IPR2018-00503, Paper 9. The current second petition was filed
on December 11, 2020.
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That is not the time period at issue in factor 4 of General Plastic. Factor 4 of
General Plastic relates to the time elapsed from when Petitioner first learned of the
prior art references applied in the follow-on second petition to when Petitioner
filed the follow-on petition. Compliance with 37 C.F.R. § 42.122(b) is an issue
separate from and independent of General Plastic factor 4. Here, no one has
alleged that Petitioner is not in compliance with 37 C.F.R. § 42.122(b).
When discussing Factor 2 above, we determined Petitioner implicitly
represented that it first became aware of the references of Richardson, Klang, Lei,
Wanzong, Epower-20, and Epower-21 upon the filing of the petition in IPR2020-
00944 on May 14, 2020. Even without that representation, it still is appropriate to
assume that Petitioner first became aware of those references on May 14, 2020,
because Petitioner had opportunity to inform the Board about when it first learned
of those references but failed to do so. Without Petitioner’s providing that specific
information, the latest time it can be regarded as becoming aware of those
references is May 14, 2020, when the petition in IPR2020-00944 was filed. That is
because Petitioner states that “[b]efore the filing of the Carku Petition, [it] did not
have knowledge of either of the primary references, namely, Richardson and
Klang” and “[n]either did [it] have prior knowledge of the other supporting
references, namely[,] Lei, Wanzong, Epower-20 brochure, and Epower-21
brochure before the filing of the Carku Petition.” Corr. Reply 2–3. Furthermore,
on page 4 of the Corrected Reply, in the context of Factor 5 of General Plastic,
Petitioner expressly states that this Petition was filed “seven months after it first
learned [of] the primary references from the filing of the Carku Petition [on May
14, 2020].” Corr. Reply 4.
Thus, the length of time that elapsed from when Petitioner first learned of
the prior art asserted in this Petition and the time Petitioner filed this Petition is
from May 14, 2020, to December 11, 2020, three days short of seven months.
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Petitioner’s assertion that “[t]here was no delay between the time Petitioner first
learned of the primary references in the Carku Petition and the time it filed the
second petition . . .” (Corr. Reply, 4) is conclusory and without evidentiary
support. The seven month period is substantial delay and, in the absence of
meaningful explanation, weighs against institution.
5. “whether the petitioner provides adequate explanation for the time
elapsed between the filings of multiple petitions directed to the same
claims of the same patent”
Petitioner states that it “filed this IPR within one month after [the] Carku
Petition was instituted, [as well as] seven months after it first learned [of] the
primary references from the filing of the Carku Petition” and even though “the first
[unsuccessful IPR2018-00503] petition was filed [nearly three years ago] in 2018”,
it “simply did not have knowledge of the primary references in this Petition [or in
the Carku Petition] until the filing of the Carku Petition.” Corr. Reply 4-5.
Patent Owner and Carku both argue that Petitioner “has made no effort to
explain” the nearly three years that have elapsed between the filing of its two
petitions. PO Opp. 9; Carku Opp. 5.
The nearly three year period that elapsed between the filing of the two
petitions is split into two separate time periods: (1) a first period spanning nearly
two years and four months from the filing of the first IPR2018-00503 petition on
January 15, 2018, to the filing of the Carku IPR2020-00944 petition on May 14,
2020; and (2) a second period spanning nearly seven months from the filing of the
Carku IPR2020-00944 petition on May 14, 2020, to the filing of the current
Petition on December 11, 2020.
Petitioner has explained why it waited for the first period of time by stating
that it was not aware of the prior art asserted in the current petition until filing of
the Carku petition, as noted above. Nevertheless, Petitioner could have filed the
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second petition immediately after learning of the asserted prior art from the filing
of the Carku petition in IPR2020-00944. However, Petitioner has not provided
any, let alone an adequate explanation as to why it waited seven months from filing
of the Carku petition to file the current Petition.
This factor weighs against institution.
6. “the finite resources of the Board”
Petitioner argues that this factor should be neutral because it seeks joinder of
the Carku Petition in an “understudy” role, “taking no action at all in the joined
proceeding so long as Carku remains an active party in that proceeding” and that
its joinder “will not consume any additional resources of the Board other than the
ones [that have] already been set aside for the Carku Petition.” Corr. Reply 5.
Patent Owner and Carku point out that if Carku were to settle, Petitioner
would continue in a proceeding that should have been terminated and hence would
unfairly earn a “second bite at the apple”. PO Opp. 9–10; Carku Opp. 1, 5–6.
In the circumstance of this case, where Petitioner has agreed to take an
“understudy role,” no more resources of the Board would be expended than would
be in the case if IPR2020-00944 is carried forward by Carku to a final written
decision. However, there is at least a theoretical possibility that Carku and Patent
Owner may settle, and yet Petitioner would be allowed to continue on with the
proceeding. Because institution in this circumstance might allow Petitioner to
continue a proceeding based on a second attempt, we conclude that this factor
weighs in favor of denying institution of the proceeding. See IPR2020-00854,
Paper 9 at 12.
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7. “the requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which the
Director notices institution of review”
Petitioner, Patent Owner and Carku all assert that this factor should be
evaluated as neutral due to uncertain impacts to the timeline of the Carku IPR2020-
00944 proceeding if Carku were to settle. PO Opp. 10; Carku Opp. 6; Corr. Reply
5. Under the facts of this case, we have no reason to disagree. Thus, we weigh
this seventh and final General Plastic factor as neutral.
III. CONCLUSION
Upon consideration of all General Plastic factors and the arguments
presented by the parties for and against the exercise of discretionary denial under
35 U.S.C. § 314(a), we conclude that on balance, the factors weigh in favor of
discretionary denial. Notably, this is a follow-on petition by the same Petitioner
who obtained benefits from learning the contents of Patent Owner’s Preliminary
Response in IPR2018-00503 and of the Board’s decision not to institute review in
IPR2018-00503, and who is without adequate explanation for waiting seven
months to file the follow-on petition after becoming aware of all of the prior art
references applied in the follow-on petition.
Additionally, because we exercise discretion under 35 U.S.C. § 314(a) to
deny institution, we subsequently apply 35 U.S.C. § 315(c) to deny Petitioner’s
Motion for Joinder and Supplemental Motion for Joinder.
IV. ORDER
Accordingly, it is:
ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied, and
FURTHER ORDERED that Petitioner’s Motion for Joinder and
Supplemental Motion for Joinder are denied.

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FOR PETITIONER:
Timothy Wang
Neal Massand
NI, WANG & MASSAND, PLLC
twang@nilawfirm.com
nmassand@nilawefirm.com

FOR PATENT OWNER:
William H. Oldach III
Rex W. Miller, II
VORYS, SATER, SEYMOUR and PEASE, LLP
wholdach@vorys.com
rwmiller@vorys.com

FOR PETITIONER in IPR2020-00944:

Kevin J. Patariu
Bing Ai
John P. Schnurer
John D. Esterhay
PERKINS COIE LLP
patariu-ptab@perkinscoie.com
ai-ptab@perkinscoie.com
schnurer-ptab@perkinscoie.com
esterhay-ptab@perkinscoie.com