Trials@uspto.gov
`Tel: 571-272-7822
`
` Paper No. 20
`Entered: April 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00443
`Patent 7,928,348 B2
`____________
`
`Before KRISTEN L. DROESCH, JOHN A. HUDALLA, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 314(a) and 37 C.F.R. §§ 42.108, 42.122
`
`
`Tel: 571-272-7822
`
` Paper No. 20
`Entered: April 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00443
`Patent 7,928,348 B2
`____________
`
`Before KRISTEN L. DROESCH, JOHN A. HUDALLA, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 314(a) and 37 C.F.R. §§ 42.108, 42.122
`
`
`
`IPR2018-00443
`Patent 7,928,348 B2
`American Honda Motor Co., Inc. (“Honda”) filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 24–27 of U.S. Patent
`No. 7,928,348 B2 (Ex. 1001, “the ’348 patent”). Honda also filed a Motion
`for Joinder (“Joinder Mot.”) requesting that we join Honda as a party with
`Aisin Seiki Co., Ltd. and Toyota Motor Corp. in Aisin Seiki Co., Ltd. v.
`Intellectual Ventures II LLC, Case IPR2017-01538 (“Aisin IPR”). Paper 3.
`In the Aisin IPR, we instituted an inter partes review as to claims 24–
`27 of the ’348 patent on three grounds of unpatentability. Aisin IPR,
`Paper 11, 27. Honda’s Petition filed in this proceeding is essentially the
`same as the Petition filed in the Aisin IPR, and it seeks inter partes review
`based on the same three grounds instituted in the Aisin IPR. Joinder Mot. 1,
`3. Honda also represents that, if it is allowed to join the Aisin IPR, it will
`assume a passive or “understudy” role and will only assume an active role if
`Petitioner in the Aisin IPR, namely, Aisin Seiki Co., Ltd. and Toyota Motor
`Corp., ceased to participate. Id. at 6–8. Honda indicates that Aisin Seiki
`Co., Ltd. and Toyota Motor Corp. do not oppose Honda’s Motion for
`Joinder. Id. at 1.
`Patent Owner, Intellectual Ventures II LLC (“IV”), filed a Preliminary
`Response and Statement of Consent to Joinder (“Prelim. Resp.”). Paper 6.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and any preliminary response “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” For the reasons that follow, we
`institute an inter partes review as to claims 24–27 of the ’348 patent on the
`
`2
`
`
`
`
`IPR2018-00443
`Patent 7,928,348 B2
`same grounds instituted in the Aisin IPR. We also grant Honda’s Motion
`for Joinder.
`
`I. INSTITUTION OF INTER PARTES REVIEW
`
`In the Aisin IPR, we instituted an inter partes review as to claims 24–
`27 of the ’348 patent on the following grounds of unpatentability:
`(1) claims 24–27 under 35 U.S.C. § 103(a) as unpatentable over
`Konishi;1
`(2) claims 24–27 under 35 U.S.C. § 103(a) as unpatentable over
`Umeda,2 Raible,3 and Neal;4
`(3) claims 24–27 under 35 U.S.C. § 103(a) as unpatentable over
`Bramm5 and Watterson.6
`Aisin IPR, Paper 11, 27. As mentioned above, the Petition filed in this
`proceeding is essentially the same as the Petition filed in the Aisin IPR, and
`Honda limited the asserted grounds in this proceeding to only those grounds
`instituted in the Aisin IPR. Joinder Mot. 3–4; compare Pet. 3–46, with Aisin
`IPR, Paper 1, 3–54.
`In its Preliminary Response, IV consents to institution and joinder.
`Prelim. Resp. 2. Given that we are granting Honda’s Motion for Joinder
`
`
`1 Japanese Patent Application Publication JP H10-238491, filed Feb. 26,
`1997, published Sept. 8, 1998 (Ex. 1003).
`2 Japanese Patent Application Publication JP H11-166500, filed Dec. 3,
`1997, published June 22, 1999 (Ex. 1004).
`3 U.S. Patent No. 5,368,438, filed June 28, 1993, issued Nov. 29, 1994
`(Ex. 1010).
`4 U.S. Patent No. 6,362,554 B1, filed Dec. 22, 1999, issued Mar. 26, 2002
`(Ex. 1014).
`5 U.S. Patent No. 4,944,748, filed May 9, 1988, issued July 31, 1990
`(Ex. 1008).
`6 U.S. Patent No. 6,227,797 B1, filed Mar. 30, 1999, issued May 8, 2001
`(Ex. 1009).
`
`3
`
`
`
`
`IPR2018-00443
`Patent 7,928,348 B2
`below; the Petition is essentially the same as, and only pertains to the
`instituted grounds in, the Aisin IPR; and IV consents to institution, we
`conclude that the information presented in the Petition establishes that there
`is a reasonable likelihood that Honda would prevail on its assertions that
`claims 24–27 would have been obvious over Konishi; Umeda, Raible, and
`Neal; or Bramm and Watterson. Pursuant to § 314, we institute an inter
`partes review as to these claims of the ’348 patent on the same grounds
`instituted in the Aisin IPR for the reasons stated in our Institution Decision
`from the Aisin IPR. See Aisin IPR, Paper 11.
`
`II. GRANTING HONDA’S MOTION FOR JOINDER
`
`The AIA created administrative trial proceedings, including inter
`partes review, as an efficient, streamlined, and cost-effective alternative to
`district court litigation. 35 U.S.C. § 315(c) provides (emphasis added):
`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
`partes review under section 314.
`“Any request for joinder must be filed, as a motion under § 42.22, no later
`than one month after the institution date of any inter partes review for which
`joinder is requested.” 37 C.F.R. § 42.122(b). Joinder may be authorized
`when warranted, but the decision to grant joinder is discretionary. See
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board determines whether to
`grant joinder on a case-by-case basis, taking into account the particular facts
`of each case, substantive and procedural issues, and other considerations.
`See Sony Corp. of Am. v. Network-1 Security Solutions, Inc., Case
`
`4
`
`
`
`
`IPR2018-00443
`Patent 7,928,348 B2
`IPR2013-00495, slip op. at 3 (PTAB Sept. 16, 2013) (Paper 13) (“Sony”).
`When exercising its discretion, the Board is mindful that patent trial
`regulations, including the rules for joinder, must be construed to secure the
`just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C.
`§ 316(b); 37 C.F.R. § 42.1(b).
`As the moving party, Honda has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`A motion for joinder should (1) set forth the reasons why joinder is
`appropriate; (2) identify any new ground(s) 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 Sony at 3; Joinder Mot. 3. Petitioner
`should address specifically how briefing and/or discovery may be simplified
`to minimize schedule impact. See Kyocera Corp. v. SoftView LLC, Case
`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)
`(representative).
` Honda’s Motion is timely because it was filed on January 12, 2018,
`which is within one month of our December 13, 2017, institution of the
`Aisin IPR. See 37 C.F.R. § 42.122 (“Any request for joinder must be filed,
`as a motion under § 42.22, no later than one month after the institution date
`of any inter partes review for which joinder is requested.”); Joinder Mot. 3.
`In its Motion for Joinder, Honda contends that joinder is appropriate
`“because the Aisin Petition involves the same patent, challenges the same
`claims, relies on a declaration from the same expert, and is based on the
`same grounds and combinations of prior art.” Joinder Mot. 3. Honda
`further contends its “Petition does not present any new grounds of
`unpatentability, and is substantively identical to the Aisin Petition.” Id. at 5.
`
`5
`
`
`
`
`IPR2018-00443
`Patent 7,928,348 B2
`Honda further argues that joinder will not impact the schedule of the Aisin
`IPR, particularly because IV “will not be required to present any additional
`responses or arguments.” Id.
`Honda also agrees to be bound by the following conditions in its
`“understudy” role if it is joined to the Aisin IPR:
`(a) all filings by Honda in the joined proceeding [shall] be
`consolidated with the filings of Aisin Seiki Co., Ltd. and
`Toyota Motor Corp., unless a filing solely concerns issues
`that do not involve Aisin Seiki Co., Ltd. and Toyota Motor
`Corp.[;]
`(b) Honda shall not be permitted to raise any new grounds not
`already instituted by the Board, or introduce any argument or
`discovery not already introduced by Aisin Seiki Co., Ltd. and
`Toyota Motor Corp.[;]
`(c) Honda shall be bound by any agreement between Patent
`Owner and Aisin Seiki Co., Ltd. and Toyota Motor Corp.
`concerning discovery and/or depositions; and
`(d) Honda at deposition shall not receive any direct, cross
`examination, or redirect time beyond that permitted from
`Aisin Seiki Co., Ltd. and Toyota Motor Corp. in this
`proceeding alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and Aisin Seiki Co., Ltd.
`and Toyota Motor Corp.
`Id. at 6–7. Honda also states that it “would assume a primary role only if
`Aisin Seiki Co., Ltd. and Toyota Motor Corp. ceased to participate in the
`proceeding.” Id. at 7.
`Given that IV consents to Honda’s Motion for Joinder, and that Honda
`agrees to consolidated filings and discovery, we conclude that Honda has
`demonstrated that joinder will result in efficiency and will not unduly
`complicate or delay the Aisin IPR.
`
`6
`
`
`
`
`IPR2018-00443
`Patent 7,928,348 B2
`Based on all of the considerations above, we are persuaded that Honda
`has met its burden of demonstrating that joinder is warranted under the
`circumstances, and we grant Honda’s Motion for Joinder. Honda will have a
`limited role in the Aisin IPR subject to the conditions set forth above. If the
`Aisin IPR is terminated with respect to either Aisin Seiki Co., Ltd. or Toyota
`Motor Corp., the roles of the remaining parties in the proceeding may be
`reevaluated.
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`instituted as to claims 24–27 of the ’348 patent on the following grounds of
`unpatentability:
`(1) claims 24–27 under 35 U.S.C. § 103(a) as unpatentable over
`Konishi;
`(2) claims 24–27 under 35 U.S.C. § 103(a) as unpatentable over
`Umeda, Raible, and Neal; and
`(3) claims 24–27 under 35 U.S.C. § 103(a) as unpatentable over
`Bramm and Watterson.
`FURTHER ORDERED that inter partes review is commenced on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial;
`FURTHER ORDERED that the trial is limited to the grounds of
`unpatentability listed above, and no other grounds of unpatentability are
`authorized for inter partes review;
`FURTHER ORDERED that Honda’s Motion for Joinder with
`Case IPR2017-01538 is granted, and Honda is joined as a party to
`Case IPR2017-01538;
`
`7
`
`
`
`
`IPR2018-00443
`Patent 7,928,348 B2
`FURTHER ORDERED that Case IPR2018-00443 is instituted, joined,
`and terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`proceeding shall be made in Case IPR2017-01538;
`FURTHER ORDERED that the case caption in Case IPR2017-01538
`shall henceforth list Honda as a Petitioner entity and include a footnote
`reflecting the joinder of IPR2018-00443 with Case IPR2017-01538;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-01538 shall remain in effect and govern the proceeding, subject to
`any schedule changes agreed to by the parties in IPR2017-01538 pursuant to
`the Scheduling Order;
`FURTHER ORDERED that Honda’s participation in the briefing,
`depositions, and oral argument of the joined proceedings shall be subject to
`the acquiescence of Aisin Seiki Co., Ltd. and Toyota Motor Corp. to
`Honda’s participation and, absent our express authorization, Honda shall not
`file papers or exhibits apart from Aisin Seiki Co., Ltd. and Toyota Motor
`Corp.;
`FURTHER ORDERED that, absent our express authorization to the
`contrary, Honda shall be bound by the conditions set forth on pages 6–7 of
`its Motion for Joinder and reproduced above, so long as Aisin Seiki Co., Ltd.
`or Toyota Motor Corp. remains a party to IPR2017-01538; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the file of Case IPR2017-01538.
`
`
`8
`
`
`
`
`IPR2018-00443
`Patent 7,928,348 B2
`PETITIONER:
`
`John Caracappa
`jcaracap@steptoe.com
`
`James Nuttall
`jnuttall@steptoe.com
`
`Li Guo
`lguo@steptoe.com
`
`
`PATENT OWNER:
`
`John R. King
`2jrk@knobbe.com
`
`Ted M. Cannon
`2tmc@knobbe.com
`
`Bridget Smith
`2bzs@knobbe.com
`
`Tim Seeley
`tims@intven.com
`
`James Hietala
`jhietala@intven.com
`
`9
`
`
`
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