Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 10
` Entered: April 26, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NIDEC CORPORATION and AMERICAN HONDA MOTOR CO., INC.,
`
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-00598
`Patent 7,067,952 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. 10
` Entered: April 26, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NIDEC CORPORATION and AMERICAN HONDA MOTOR CO., INC.,
`
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-00598
`Patent 7,067,952 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)
`
`
`
`
`Case IPR2018-00598
`Patent 7,067,952 B2
`
`I. INTRODUCTION
`Nidec Corporation and American Honda Motor Co. Inc. (“Nidec and
`Honda,” collectively, “Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–6 and 8–14 (“the challenged claims”) of U.S. Patent No.
`7,067,952 B2 (Ex. 1001, “the ’952 Patent”). Paper 1 (“Pet”). Petitioner also
`filed a Motion for Joinder, seeking joinder as petitioner with Denso
`Corporation (“Denso”) and Toyota Motor Corp. (“Toyota”) in Denso Int’l
`Amer. Inc. v. Intellectual Ventures II LLC, Case No. IPR2017-01631
`(“’1631 IPR”). Paper 4 (“Mot.” or “Motion for Joinder”). Intellectual
`Ventures II LLC (“Patent Owner” or “IV”) filed a Preliminary Response and
`Statement of Consent to Joinder with IPR2017-01631. Paper 8 (“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 1–6 and 8–
`14 and grant Petitioner’s Motion for Joinder for the reasons provided below.
`
`
`
`2
`
`
`
`Claims
`10 and 14
`11
`10, 12, and 14
`1, 2, 4, 6, 8, 9,
`12, and 13
`3 and 5
`
`§ 103
`
`Case IPR2018-00598
`Patent 7,067,952 B2
`INSTITUTION OF INTER PARTES REVIEW
`II.
`We instituted an inter partes review in the ’1631 IPR of the following
`claims of the ’952 Patent on the following grounds and prior art (’1631 IPR,
`slip op. at 39 (PTAB Jan. 17, 2018) (Paper 11)):
`Statutory
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`
`Reference(s)
`Calsonic1
`Calsonic and Dunfield2
`DENSO3 and Calsonic
`Calsonic and Matsushita4
`Calsonic, Matsushita, and knowledge
`of a person of ordinary skill in the art
`The Petition in this proceeding asserts the same grounds as those
`instituted in the ’1631 IPR. Compare Pet. 74, with ’1631 IPR, slip op. at 39
`(PTAB Jan. 17, 2018) (Paper 11). Petitioner also relies on a Declaration of
`Dr. Thomas R. Brinner (Ex. 1013), which Petitioner asserts is substantively
`identical to Dr. Brinner’s Declaration filed in the ’1631 IPR. See Mot. 4.
`Patent Owner consents to institution of inter partes review and joinder of
`Nidec and Honda as petitioner to the ’1631 IPR. See Prelim. Resp. &
`Consent 2. In view of the fact that the issues in the instant Petition and in
`the ’1631 IPR are identical, and that we have already considered Patent
`Owner’s arguments in the ’1631 IPR, pursuant to § 314, we institute inter
`partes review as to claims 1–6 and 8–14 in this proceeding on the grounds
`presented in the Petition for the same reasons stated in our Decision on
`
`
`1 Ex. 1003, JP 2000-184635 A, published June 30, 2000 (“Calsonic”).
`2 Ex. 1010, U.S. Patent No. 5,694,268, issued Dec. 2, 1997 (“Dunfield”).
`3 Ex. 1005, JP S60-278563, published June 20, 1987 (“DENSO”).
`4 Ex. 1008, JP H11-341717 A, published Dec. 10, 1999 (“Matsushita”).
`3
`
`
`
`
`
`Case IPR2018-00598
`Patent 7,067,952 B2
`Institution in the ’1631 IPR. See ’1631 IPR, slip op. at 14–39 (PTAB
`Jan. 17, 2018) (Paper 11).
`
`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, Nidec and Honda have the burden of proof in
`establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c),
`
`
`
`4
`
`
`
`Case IPR2018-00598
`Patent 7,067,952 B2
`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; Mot. 3–4. 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).
`Nidec and Honda’s Motion is timely because it was filed within one
`month of institution of the ’1631 IPR. See Mot. 4 (citing 37 C.F.R.
`§ 42.122). In their Motion for Joinder, Nidec and Honda contend that
`joinder is appropriate because “[t]he Petition is substantively identical to the
`[’1631] Petition, presenting the same grounds of rejection, based on the
`same evidence and supporting declaration.” Id. Nidec and Honda further
`contend their “Petition does not present any new grounds of
`unpatentability.” Id. Nidec and Honda further argue that joinder will not
`impact the schedule of the ’1631 IPR, particularly because Patent Owner
`“will not be required to present any additional responses or arguments.”
`Id. at 5.
`Nidec and Honda also agree to be bound by the following conditions
`in their “understudy” role if they are joined to the ’1631 IPR:
`(a) all filings by Nidec and Honda in the joined proceeding
`[shall] be consolidated with the filings of Toyota and Denso,
`unless a filing solely concerns issues that do not involve
`Toyota or Denso;
`(b) Nidec and Honda shall not be permitted to raise any new
`grounds not already instituted by the Board, or introduce any
`
`
`
`5
`
`
`
`Case IPR2018-00598
`Patent 7,067,952 B2
`argument or discovery not already introduced by Toyota or
`Denso;
`(c) Nidec and Honda shall be bound by any agreement between
`[Patent Owner] IV, Toyota, and Denso concerning discovery
`and/or depositions; and
`(d) Nidec and Honda, at deposition, shall not receive any direct,
`cross examination or redirect time beyond that permitted for
`Toyota and Denso in this proceeding alone under either 37
`C.F.R. § 42.53 or any agreement between [Patent Owner] IV,
`Toyota, and Denso.
`Mot. 6. Nidec and Honda also state they “would assume a primary role only
`if Toyota and Denso ceased to participate in the proceeding.” Id. at 7.
`Given that Patent Owner consents to Nidec and Honda’s Motion for
`Joinder, and that Nidec and Honda agree to consolidated filings and
`discovery, we conclude Nidec and Honda have demonstrated that joinder
`will result in efficiency and will not unduly complicate or delay the
`’1631 IPR.
` Based on all of the considerations above, we are persuaded that Nidec
`and Honda have met their burden of demonstrating that joinder is warranted
`under the circumstances, so we grant Nidec and Honda’s Motion for Joinder.
`Nidec and Honda will have a limited role in the ’1631 IPR subject to the
`conditions set forth above. If the ’1631 IPR is terminated with respect to
`either Denso or Toyota, 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
`’952 Patent is instituted on the following asserted grounds:
`Claims 10 and 14 under 35 U.S.C. § 102 as anticipated by Calsonic;
`6
`
`
`
`
`
`Case IPR2018-00598
`Patent 7,067,952 B2
`Claim 11 under 35 U.S.C. § 103 as unpatentable over Calsonic and
`Dunfield;
`Claims 10, 12, and 14 under 35 U.S.C. § 103 as unpatentable over
`DENSO and Calsonic;
`Claims 1, 2, 4, 6, 8, 9, 12, and 13 under 35 U.S.C. § 103 as
`unpatentable over Calsonic and Matsushita; and
`Claims 3 and 5 under 35 U.S.C. § 103 as unpatentable over Calsonic,
`Matsushita, and knowledge of a person of ordinary skill in the art;
`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 Nidec and Honda’s Motion for Joinder
`with IPR2017-01631 is granted, and Nidec and Honda are joined as a party
`to Case IPR2017-01631;
`FURTHER ORDERED that Case IPR2018-00598 is instituted, joined,
`and terminated under 37 C.F.R. § 42.72 and all future filings are to be made
`only in IPR2017-01631;
`FURTHER ORDERED that the case caption in Case IPR2017-01631
`shall henceforth list Nidec and Honda as Petitioner entities and include a
`footnote reflecting the joinder of IPR2018-00598 with Case IPR2017-01631;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-01631 shall remain in effect and govern the proceeding, subject to
`
`
`
`7
`
`
`
`Case IPR2018-00598
`Patent 7,067,952 B2
`any schedule changes agreed to by the parties in IPR2017-01631 pursuant to
`the Scheduling Order;
`FURTHER ORDERED that, absent our express authorization to the
`contrary, Nidec and Honda shall be bound by the conditions set forth on
`page 6 of their Motion for Joinder and reproduced above, so long as Denso
`or Toyota remains a party to IPR2017-01631; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2017-01631.
`
`
`
`
`
`
`
`
`8
`
`
`
`Case IPR2018-00598
`Patent 7,067,952 B2
`PETITIONER FOR IPR2018-00598:
`John Flock
`Michael Turner
`ANDREWS KURTH KENYON LLP
`jflock@kenyon.com
`mturner@kenyon.com
`
`John Caracappa
`James Nuttall
`Li Guo
`STEPTOE & JOHNSON LLP
`jcaracap@steptoe.com
`jnuttall@steptoe.com
`lguo@steptoe.com
`
`PETITIONER FOR IPR2017-01631:
`
`Joshua L. Goldberg
`James R. Barney
`Thomas W. Winland
`Tyler M. Akagi
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`joshua.goldberg@finnegan.com
`james.barney@finnegan.com
`tom.winland@finnegan.com
`tyler.akagi@finnegan.com
`
`Paul R. Steadman
`Matthew D. Satchwell
`Gianni Minutolli
`Harpreet Singh
`DLA PIPER LLP (US)
`paul.steadman@dlapiper.com
`matthew.satchwell@dlapiper.com
`Gianni.mintoli@dlapiper.com
`Harpreet.singh@dlapiper.com
`
`
`
`
`
`
`
`9
`
`
`
`Case IPR2018-00598
`Patent 7,067,952 B2
`PATENT OWNER:
`Brad M. Scheller
`William Meunier
`Michael T. Renaud
`Daniel B. Weinger
`Serge Subach
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`bmscheller@mintz.com
`wameunier@mintz.com
`mtrenaud@mintz.com
`dbweinger@mintz.com
`ssubach@mintz.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`
`
`
`10
`
`
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