Trials@uspto.gov
`571.272.7822
`
` Paper No. 19
`Entered: April 26, 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 IPR2018-00444
`Patent 7,683,509 B2
`_______________
`
`Before KRISTEN L. DROESCH, JOHN A. HUDALLA,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review and
`Grant of Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`571.272.7822
`
` Paper No. 19
`Entered: April 26, 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 IPR2018-00444
`Patent 7,683,509 B2
`_______________
`
`Before KRISTEN L. DROESCH, JOHN A. HUDALLA,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review and
`Grant of Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`IPR2018-00444
`Patent 7,683,509 B2
`
`I.
`
`INTRODUCTION
`
`American Honda Motor Co. Inc. (“Honda,” “Petitioner”) filed a
`Petition requesting an inter partes review of claims 1, 2, 7, 14, and 15 (“the
`challenged claims”) of U.S. Patent No. 7,683,509 B2 (Ex. 1001, “the
`’509 Patent”). Paper 1 (“Pet”). Petitioner also filed a Motion for Joinder,
`seeking joinder as petitioner with Aisin Seiki Co., Ltd. (“Aisin Seiki”) and
`Toyota Motor Corp. (“Toyota”) in Aisin Seiki Co., Ltd. v. Intellectual
`Ventures II LLC, Case No. IPR2017-01539 (“’1539 IPR”). Paper 3 (“Mot.”
`or “Motion for Joinder”). Intellectual Ventures II LLC (“Patent Owner”)
`filed a Preliminary Response and Statement of Consent to Joinder with
`IPR2017-01539. Paper 6 (“Prelim. Resp. & Consent”).
`We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An
`inter partes review may not be instituted unless it is determined that “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 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.” 35 U.S.C. § 314(a).
`After considering the Petition, Motion for Joinder, and Preliminary
`Response & Consent, we institute inter partes review of claims 1, 2, 7, 14,
`and 15 and grant Petitioner’s Motion for Joinder for the reasons below.
`
`
`
`
`
`2
`
`
`
`IPR2018-00444
`Patent 7,683,509 B2
`INSTITUTION OF INTER PARTES REVIEW
`II.
`We instituted an inter partes review in the ’1539 IPR of the following
`claims of the ’509 Patent on the following grounds and prior art (’1539 IPR,
`slip op. at 30–31 (PTAB Dec. 13, 2017) (Paper 10)):
`Claims
`Statutory Basis
`References
`Umeda1, Raible2, and
`1, 2, 7, 14, and 15
`§ 103
`Neal3
`1, 2, 14, and 15
`§ 103
`Bramm4 and Watterson5
`The Petition in this proceeding asserts the same grounds as those we
`instituted in the ’1539 IPR. Compare Pet. 4, with ’1539 IPR, slip op. at 30–
`31 (PTAB Dec. 13, 2017) (Paper 10). Petitioner also relies on a Declaration
`of Dr. David L. Trumper (Ex. 1002), which Petitioner asserts is
`substantively identical to Dr. Trumper’s Declaration filed in the ’1539 IPR.
`See Mot. 6. Patent Owner consents to institution of inter partes review and
`joinder of Honda as a petitioner to the ’1539 IPR. See Prelim. Resp. &
`Consent 2–3. In view of the fact that the issues in the instant Petition and in
`the ’1539 IPR are identical, and that we have already considered Patent
`Owner’s arguments in the ’1539 IPR, pursuant to § 314, we institute inter
`partes review as to claims 1, 2, 7, 14, and 15 in this proceeding on the
`grounds presented in the Petition for the same reasons stated in our Decision
`on Institution in the ’1539 IPR. See ’1539 IPR, slip op. at 12–31 (PTAB
`Dec. 13, 2017) (Paper 10).
`
`
`1 Ex. 1004, 16–28, JP H11–16550, published June 22, 1999 (“Umeda”).
`2 Ex. 1010, U.S. Patent No. 5,368,438, issued Nov. 29, 1994 (“Raible”).
`3 Ex. 1014, U.S. Patent No. 6,362,554 B1, issued Mar. 26, 2002 (“Neal”).
`4 Ex. 1008, U.S. Patent No. 4,944,748, issued July 31, 1990 (“Bramm”).
`5 Ex. 1009, U.S. Patent No. 6,227,797 B1, issued May 8, 2001
`(“Watterson”).
`
`
`
`3
`
`
`
`IPR2018-00444
`Patent 7,683,509 B2
`III. GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`§ 315(c):
`(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.
`
`
`“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
`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
`
`
`
`4
`
`
`
`IPR2018-00444
`Patent 7,683,509 B2
`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 within one month of
`institution of the ’1539 IPR. See Mot. 3 (citing 37 C.F.R. § 42.122). In its
`Motion for Joinder, Honda contends that joinder is appropriate “because the
`Toyota 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.” Id. Honda further contends its “Petition does not
`present any new grounds of unpatentability, and is substantively identical to
`the Toyota Petition.” Id. at 5; see id. at 3–4. Honda further argues that
`joinder will not impact the schedule of the ’1539 IPR, particularly because
`“Patent Owner will not be required to present any additional responses or
`arguments.” Id. at 5.
`Honda also agrees to be bound by the following conditions in its
`“understudy” role if it is joined to the ’1539 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
`
`
`
`5
`
`
`
`IPR2018-00444
`Patent 7,683,509 B2
`(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.
`Mot. 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 Patent Owner consents to Honda’s Motion for Joinder, and
`that Honda agrees to consolidated filings and discovery, we conclude Honda
`has demonstrated that joinder will result in efficiency and will not unduly
`complicate or delay the ’1539 IPR.
` 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, so we grant Honda’s Motion for Joinder. Honda will
`have a limited role in the ’1539 IPR subject to the conditions set forth above.
`If the ’1539 IPR is terminated with respect to either Toyota or Aisin Seiki,
`the roles of the remaining parties in the proceeding may be reevaluated.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes of the
`’509 Patent is instituted on the following asserted grounds:
`Claims 1, 2, 7, 14, and 15 under 35 U.S.C. § 103 as unpatentable over
`Umeda, Raible, and Neal; and
`Claims 1, 2, 14, and 15 under 35 U.S.C. § 103(a) as unpatentable over
`Bramm and Watterson;
`
`
`
`6
`
`
`
`IPR2018-00444
`Patent 7,683,509 B2
`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
`IPR2017-01539 is granted, and Honda is joined as a party to Case IPR2017-
`01539;
`FURTHER ORDERED that Case IPR2018-00444 is instituted, joined,
`and terminated under 37 C.F.R. § 42.72 and all future filings are to be made
`only in IPR2017-01539;
`FURTHER ORDERED that the case caption in Case IPR2017-01539
`shall henceforth list Honda as a Petitioner entity and include a footnote
`reflecting the joinder of IPR2018-00444 with Case IPR2017-01539;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-01539 shall remain in effect and govern the proceeding, subject to
`any schedule changes agreed to by the parties in IPR2017-01539 pursuant to
`the Scheduling Order;
`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 or
`Toyota remains a party to IPR2017-01539; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2017-01539.
`
`
`
`
`
`7
`
`
`
`IPR2018-00444
`Patent 7,683,509 B2
`PETITIONER:
`
`Joshua Goldberg
`Joshua.goldberg@finnegan.com
`
`Robert Mattson
`cpdocketmattson@oblon.com
`
`Thomas Winland
`Tom.winland@finnegan.com
`
`Alyssa Holtslander
`Alyssa Holslander@finnegan.com
`
`James Barney
`James.barney@finnegan.com
`
`John Kern
`cpdocketkern@oblon.com
`
`Lisa Mandrusiak
`cpdocketmandrusiak@oblon.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
`
`
`
`8
`
`
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