`Tel: 571-272-7822
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`
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`Paper 48
`Entered: December 12, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00424
`Patent 5,845,000 B2
`____________
`
`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.05
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`
`Introduction
`
`This inter partes review was instituted on January 14, 2014. Paper
`
`16. Oral argument was held on August 18, 2014. Paper 37. A final written
`
`decision is expected on or prior to January 14, 2015. 35 U.S.C.
`
`§ 316(a)(11). On December 9, 2014, a conference call was held among
`
`respective counsel for the parties and Judges Lee, Jefferson, and Pettigrew.
`
`Patent Owner initiated the conference call to request authorization to file a
`
`Motion to Terminate Reexamination Proceeding. The motion would seek
`
`termination not of this proceeding, but an ex parte reexamination proceeding
`
`recently requested by Petitioner for U.S. Patent No. 5,845,000 (“the ’000
`
`patent”), on November 13, 2014, Reexamination Control No. 90/020,078.
`
`Discussion
`
`
`
`Counsel for Patent Owner explained that Petitioner’s recently filed
`
`request for ex parte reexamination amounts to yet another bite of the apple
`
`by Petitioner, noting this proceeding, and also IPR2015-00262, filed by
`
`Petitioner on November 17, 2014, both directed to the ’000 patent. Patent
`
`Owner would request, in its motion, that we exercise authority under
`
`35 U.S.C. § 315(d) to terminate the ex parte reexamination proceeding
`
`requested by Petitioner. According to Patent Owner, the multiple
`
`proceedings attempted to be instituted by Petitioner are abusive. Also
`
`according to Patent Owner, the estoppel provision of 35 U.S.C. § 315(e)(1)
`
`applies to preclude Petitioner from requesting or maintaining another
`
`proceeding before the U.S. Patent and Trademark Office.
`
`
`
`Notwithstanding the above-noted contentions, counsel for Patent
`
`Owner concedes that nothing from any potential reexamination proceeding
`
`to be ordered on the basis of Petitioner’s request for ex parte reexamination
`
` 2
`
`
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`possibly can affect the final written decision in this proceeding. Also, we
`
`note that no reexamination proceeding has been ordered for the ’000 patent
`
`based on the recently filed request for reexamination. For both of these
`
`reasons, there is no occasion for Patent Owner to file, in this proceeding, a
`
`Motion to Terminate Reexamination which seeks to terminate a
`
`reexamination proceeding.
`
`Conclusion
`
`
`
`It is ORDERED that Patent Owner is not authorized to file, in this
`
`proceeding, a Motion to Terminate Reexamination.
`
`
`
`
`
`
`
`
`
`PETITIONER:
`
`Matthew Berkowitz
`Antony Pfeffer
`Thomas Makin
`mberkowitz@kenyon.com
`apfeffer@kenyon.com
`tmakin@kenyon.com
`
`
`PATENT OWNER:
`
`Thomas Wimbiscus
`Christopher Scharff
`Scott McBride
`twimbiscus@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`
` 3
`
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`
`
`
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