Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 15
` Entered: December 20, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HYUNDAI MOTOR COMPANY LTD., HYUNDAI MOTOR AMERICA,
`HYUNDAI MOTOR MANUFACTURING ALABAMA, LLC, KIA
`MOTORS CORPORATION, KIA MOTORS AMERICA, INC.,
`KIA MOTORS MANUFACTURING GEORGIA, INC., NISSAN NORTH
`AMERICA, INC., NISSAN MOTOR CO., LTD., and AMERICAN
`HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`_______________
`
`Cases IPR2016-01533, IPR2016-01557, IPR2016-01560
`Patent 8,155,342 B2
`_______________
`Before JAMESON LEE, THOMAS L. GIANNETTI, MIRIAM L. QUINN,
`and KERRY BEGLEY, Administrative Patent Judges.1
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108 and 37 C.F.R. § 42.122(b)
`
`
`1 This is not a decision by an expanded panel of the Board. Judges Quinn,
`Lee, and Giannetti are paneled in IPR2016-01557 and IPR2016-01560.
`Judges Quinn, Begley, and Lee are paneled in IPR2016-01533.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 15
` Entered: December 20, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HYUNDAI MOTOR COMPANY LTD., HYUNDAI MOTOR AMERICA,
`HYUNDAI MOTOR MANUFACTURING ALABAMA, LLC, KIA
`MOTORS CORPORATION, KIA MOTORS AMERICA, INC.,
`KIA MOTORS MANUFACTURING GEORGIA, INC., NISSAN NORTH
`AMERICA, INC., NISSAN MOTOR CO., LTD., and AMERICAN
`HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`_______________
`
`Cases IPR2016-01533, IPR2016-01557, IPR2016-01560
`Patent 8,155,342 B2
`_______________
`Before JAMESON LEE, THOMAS L. GIANNETTI, MIRIAM L. QUINN,
`and KERRY BEGLEY, Administrative Patent Judges.1
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108 and 37 C.F.R. § 42.122(b)
`
`
`1 This is not a decision by an expanded panel of the Board. Judges Quinn,
`Lee, and Giannetti are paneled in IPR2016-01557 and IPR2016-01560.
`Judges Quinn, Begley, and Lee are paneled in IPR2016-01533.
`
`
`
`IPR2016-01533
`IPR2016-01557
`IPR2016-01560
`Patent No. 8,155,342 B2
`
`I.
`
`INTRODUCTION
`Various Hyundai and Kia entities, listed in the caption above, filed a
`Petition (IPR2016-01557, Paper 1) requesting inter partes review of claims
`49−57, 62−64, 66, 68, 70, 71, 73−80, 94, 95, 97, 99−103, 106, 109−111,
`113, 115, and 120 (“the challenged claims”) of U.S. Patent No. 8,155,342
`B2 (Ex. 1001, “the ’342 patent”), and concurrently filed a Motion for
`Joinder (IPR2016-01557, Paper 8, “Mot.”). The Nissan entities captioned
`above filed a substantively identical Petition (IPR2016-01560, Paper 3), and
`a Motion for Joinder (IPR2016-01560, Paper 4). Finally, American Honda
`Motor Co. also filed a substantively identical Petition (IPR2016-01533,
`Paper 2) and a Motion for Joinder (IPR2016-01533, Paper 3).
`The pending Motions for Joinder seek joinder of these proceedings
`with Toyota Motor Corporation v. Blitzsafe Texas, LLC., Case IPR2016-
`00418 (“the Toyota IPR”). Mot. 1.2 Patent Owner filed Oppositions to the
`Motions for Joinder. Paper 13 (“Opp.”).3 Petitioner replied to Patent
`Owner’s opposition. Paper 14 (“Reply”). Patent Owner did not file a
`Preliminary Response. For the reasons described below, we institute an
`
`
`2 Given the similarities in the filed motions for joinder, we refer hereinafter
`to the Motion for Joinder filed in IPR2016-01557.
`3 Patent Owner filed Oppositions in IPR2016-01557 and IPR2016-01533 but
`did not file an Opposition to the Motion for Joinder in IPR2016-01560. For
`ease of reference, hereinafter we refer to the Opposition filed in IPR2015-
`01557.
`
`
`
`2
`
`
`
`IPR2016-01533
`IPR2016-01557
`IPR2016-01560
`Patent No. 8,155,342 B2
`
`inter partes review of the challenged claims and grant the Motions for
`Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`The Petitions in these proceeding assert the same grounds as those we
`considered in the Toyota IPR, filed by Toyota Motor Corporation (“Toyota
`Petitioner”), in which we instituted inter partes review of the ’342 patent on
`July 8, 2016 based on all asserted grounds. See Mot. 1, 8; Pet. 5.4 Indeed,
`according to Petitioner the instant Petitions are “intentionally identical to the
`petition in the Toyota IPR in all substantive aspects.” Mot. 6. There is no
`dispute otherwise, and our inspection of the filings reveal that the grounds
`(and prior art) upon which the requested reviews of the ’342 patent are
`presented in these proceedings are identical to the grounds on which we
`instituted trial in the Toyota IPR. The Petitions in these proceedings also are
`supported by a declaration of Dr. Thomas Matheson (Ex. 1016) that is
`“substantively identical” to the declaration of Dr. Thomas Matheson filed in
`the Toyota IPR. Mot. 6.
`
`Accordingly, for essentially the same reasons set forth in our Decision
`on Institution5 in the Toyota IPR, we hereby grant the instant Petitions on all
`asserted grounds.
`
`III. GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`§ 315(c):
`
`
`4 We refer hereinafter to the Petition filed in IPR2015-01557.
`5 TOYOTA IPR, Paper 13.
`
`
`
`3
`
`
`
`IPR2016-01533
`IPR2016-01557
`IPR2016-01560
`Patent No. 8,155,342 B2
`
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5,
`http://www.uspto.gov/patentsapplication-process/appealing-
`patentdecisions/trials/patent-reviewprocessing-system-prps-0.
`Petitioner asserts that joinder is appropriate as all the claims
`challenged in these proceedings, the grounds, prior art, and evidence
`submitted in support of the Petition are the same as in the Toyota IPR. Mot.
`6. Joinder, thus, would avoid duplicate efforts and “secure the just, speedy,
`and inexpensive resolution of these related proceedings.” Id. at 6−7.
`Petitioner further asserts that no impact to the trial schedule would ensue if
`joinder is granted. Mot. 9. In particular, Petitioner agrees to adhere to the
`deadlines set in the ongoing trial in the Toyota IPR. Id. Petitioner also
`agrees to consolidated discovery and consolidated filings. Id. at 8.
`
`
`
`4
`
`
`
`IPR2016-01533
`IPR2016-01557
`IPR2016-01560
`Patent No. 8,155,342 B2
`
`
`Patent Owner opposes the joinder on the basis that estoppel provisions
`under 35 U.S.C. § 315(b)6 would be violated if joinder were granted.
`Opp. 1. In particular, Patent Owner argues that Petitioner “filed its joinder
`Petitioner more than one year after it had been served with a complaint
`alleging infringement” of the ’342 patent. Id. Citing § 315(b), Patent
`Owner takes the position that Petitioner is barred from filing the Petition and
`joinder motion. Id. at 2.
`Patent Owner also argues that joining Petitioner with the Toyota IPR
`would result in the Hyundai/Kia entities and the Honda entities being
`allowed to “simultaneously argue two different positions” because these
`entities filed another petition for inter partes review concerning the
`’342 patent (IPR2016-01476 and IPR2016-01473, respectively). Opp. 2−3.
`At this time, we note that the Board has not made a determination with
`respect to other petitions in IPR2016-01476 and IPR2016-01473. At this
`juncture, there is no evidence of inconsistent positions. Should such
`inconsistencies arise, the panel will address those at the appropriate time.
`We are not persuaded by Patent Owner’s argument that the time bar
`codified in § 315(b) prevents joinder. Although we recognize that, in
`enacting the one-year time-bar provision applicable to inter partes review, a
`concern was repeated harassment of patent holders, that concern does not
`inform our understanding of whether joinder is proper under the
`circumstances argued here. Specifically, we note that § 315(b), the statutory
`
`
`6 Patent Owner also cites § 316(a)(11), but fails to argue how this statute
`would be violated by granting joinder in this proceeding.
`
`
`
`5
`
`
`
`IPR2016-01533
`IPR2016-01557
`IPR2016-01560
`Patent No. 8,155,342 B2
`
`provision barring a Petitioner who has been sued more than one year before
`filing the Petition (“one-year bar”), exempts requests for joinder. See
`Reply 2 (arguing that the Board implements a statutory exception with
`respect to joinder requests).
`
`Joinder is discretionary based on the particular circumstances of each
`proceeding. For the captioned proceedings, we agree with Petitioner that
`joinder is appropriate and will not unduly impact the ongoing trial in the
`Toyota IPR. Because the ongoing trial is well under way, we limit
`Petitioner’s participation in the joined proceeding, such that (1) the Toyota
`Petitioner, alone, is responsible for all Petitioner filings until such a time that
`the Toyota Petitioner is no longer an entity in the proceeding, and (2) all
`joined Petitioner entities are bound by those filings. These are conditions
`precedent to granting this joinder. This arrangement promotes the just and
`efficient administration of the ongoing trial and protects the interests of
`Petitioner and Patent Owner. Finally, to the extent a Petitioner continues to
`maintain several proceedings before the Office regarding the ’342 patent, the
`parties may request briefing to address what impact, if any, 35 U.S.C.
`§ 315(e)(1) will have on the pending proceedings.
`
`IV. ORDER
`
`In view of the foregoing, it is
`ORDERED that IPR2016-01533, IPR2016-01557, and IPR2016-
`01560 are hereby instituted as to all challenged claims 49−57, 62−64, 66, 68,
`70, 71, 73−80, 94, 95, 97, 99−103, 106, 109−111, 113, 115, and 120 of the
`’342 patent;
`
`
`
`6
`
`
`
`IPR2016-01533
`IPR2016-01557
`IPR2016-01560
`Patent No. 8,155,342 B2
`
`
`FURTHER ORDERED that Petitioner’s Motions for Joinder in
`IPR2016-01533 (Paper 3), IPR2016-01557 (Paper 8), and IPR2016-01560
`(Paper 4) with IPR2016-00418 are granted;
`FURTHER ORDERED that the grounds on which trial in IPR2016-
`00418 was instituted are unchanged and no other grounds are included in the
`joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2016-00418 (Paper 14) and schedule changes agreed-to by the parties in
`that proceeding (pursuant to the Scheduling Order) shall govern the schedule
`of the joined proceeding;
`FURTHER ORDERED that, throughout the joined proceeding, all
`substantive filings in the joined proceeding, IPR2016-00418, will be the
`responsibility of the Toyota Petitioner, alone, and all joined Petitioner
`entities are bound by those filings;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-00418;
`FURTHER ORDERED that IPR2016-01533, IPR2016-01557, and
`IPR2016-01560 are terminated under 37 C.F.R. § 42.72 and all further
`filings in the joined proceeding are to be made in IPR2016-00418; and
`FURTHER ORDERED that the case caption in IPR2016-00418 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`7
`
`
`
`
`
`
`
`IPR2016-01533
`IPR2016-01557
`IPR2016-01560
`Patent No. 8,155,342 B2
`
`PETITIONER:
`
`IPR2016-01533:
`Joseph Melnik (Lead counsel)
`Joseph Beauchamp (Back-up counsel)
`H. Albert Liou (Back-up counsel)
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`IPR2016-01557:
`Paul R. Steadman (Lead counsel)
`Matthew D. Satchwell (Back-up counsel)
`Gianni Minutoli (Back-up counsel)
`Nicholas Panno (Back-up counsel)
`paul.steadman@dlapiper.com
`matthew.satchwell@dlapiper.com
`Gianni.minutoli@dlapiper.com
`Nicholas.panno@dlapiper.com
`
`IPR2016-01560:
`Sean Hsu (Lead counsel)
`shsu@hdbdlaw.com
`
`Toyota IPR:
`William H. Mandir
`John F. Rabena
`Yoshinari Kishimoto
`Brian K. Shelton
`Fadi N. Kiblawi
`Margaret M. Welsh
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`jrabena@sughrue.com
`bshelton@sughrue.com
`toyota@sughrue.com
`
`
`
`
`8
`
`
`
`IPR2016-01533
`IPR2016-01557
`IPR2016-01560
`Patent No. 8,155,342 B2
`
`PATENT OWNER:
`
`Peter Lambrianakos (Lead Counsel)
`Shahar Harel (Back-up Counsel)
`Vincent Rubino (Back-up Counsel)
`plambrianakos@brownrudnick.com
`sharel@brownrudnick.com
`vrubino@brownrudnick.com
`
`
`
`
`
`
`9
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 15
` Entered: December 20, 2016
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOYOTA MOTOR CORPORATION, HYUNDAI MOTOR COMPANY
`LTD., HYUNDAI MOTOR AMERICA, HYUNDAI MOTOR
`MANUFACTURING ALABAMA, LLC, KIA MOTORS CORPORATION,
`KIA MOTORS AMERICA, INC., KIA MOTORS MANUFACTURING
`GEORGIA, INC., NISSAN NORTH AMERICA, INC., NISSAN MOTOR
`CO., LTD., and AMERICAN HONDA MOTOR CO., INC.,
`
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-004181
`Patent 8,155,342 B2
`_______________
`
`
`
`
`1 Cases IPR2016-01533, IPR2016-01557, and IPR2016-01560 have been
`joined with this proceeding.
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