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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`TOYOTA MOTOR CORPORATION
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`Petitioner
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`
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`Patent No. 6,772,057
`Issue Date: Aug. 3, 2004
`Title: VEHICULAR MONITORING SYSTEMS USING IMAGE PROCESSING
`__________________________________________________________________
`
`MOTION FOR JOINDER
`PURSUANT TO 35 U.S.C. § 315(C) AND
`37 C.F.R. §§ 42.22 AND 42.122(B)
`
`Case No. IPR2013-00419
`__________________________________________________________________
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`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b),
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`Petitioner Toyota respectfully requests joinder of an Inter Partes Review it filed,
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`IPR2013-0419 (the “Toyota IPR”), with a recently instituted IPR filed by Mercedes-
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`Benz USA LLC (“Mercedes”): Mercedes-Benz USA, LLC, v. American Vehicular Sciences,
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`LLC, Case No. IPR2014-00646 (the “Mercedes IPR,” or “Mercedes’ IPR”). Both
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`proceedings relate to U.S. Patent No. 6,772,057 (“the ’057 patent”), cover
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`substantially identical claim sets, and are primarily based on the same prior art
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`reference—U.S. Patent No. 6,553,130 to Lemelson (“Lemelson”). This is the second
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`joinder motion that Toyota has filed with respect to the Mercedes IPR; Toyota has
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`separately filed a motion to join a new petition—IPR2015-00261—with the Mercedes
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`IPR.
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`Although the Toyota IPR was filed much earlier than the Mercedes IPR, and is
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`due for a final written decision in less than two months, there are practical and
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`equitable reasons why the Board should join the two proceedings and issue a single
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`final written decision covering the combined issues raised in both proceedings.
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`First, the Toyota IPR and Mercedes IPRs challenge mostly the same claims of
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`the ’057 patent based primarily on the Lemelson reference. Joinder of the Toyota
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`IPR and Mercedes IPR would simply consolidate the issues such that the patentability
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`of the claims over Lemelson is resolved all at once (i.e., in October 2015 when a final
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`written decision will be due in the Mercedes IPR) and on a complete and harmonized
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`record.
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`-1-
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`Second, in the event that the Board concluded that one or more claims were
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`not unpatentable based on the record in the Toyota IPR, granting this joinder motion
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`will ensure that Toyota can participate throughout the Mercedes IPR without the need
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`for the Board to address possible disputes regarding the scope of estoppel under 35
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`U.S.C. § 315(e)(1), in either district court or in connection with Toyota’s new
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`petition—IPR2015-00261—if it is joined with the Mercedes IPR. Toyota does not
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`believe that estoppel would apply in any event, since the obviousness arguments
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`presented in the IPR2015-00261 petition are not those that it “raised or could have
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`raised” during the Toyota IPR. But, joinder of the Toyota IPR and the Mercedes IPR
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`would avoid any need to engage in briefing and analysis of complicated estoppel
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`issues.
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`Toyota is not trying to re-argue any of the same positions it took in the Toyota
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`IPR. Toyota simply requests the procedural opportunity to argue that claims
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`containing the “generated from” language would have been obvious in view of
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`Lemelson, to the extent it has been effectively barred from arguing this obviousness
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`position during the Toyota IPR. Joining the Toyota IPR and the Mercedes IPR
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`provides the Board with the procedural vehicle to give Toyota that opportunity
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`without having to resolve complicated estoppel issues.
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`Finally, the America Invents Act contemplates extending the deadline for
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`issuance of a final written decision in these types of circumstances. 35 U.S.C. §
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`316(a)(11) indicates that the statutory deadline for completing a final determination
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`may be adjusted in the event of joinder under 35 U.S.C. § 315(c). See also 37 C.F.R. §
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`42.100(c). Joinder would also further Congressional goals of ensuring the “integrity
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`of the patent system” and the “efficient administration of the Office.” It would
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`ensure that the Board hears evidence from both sides now that Mercedes and AVS
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`have resolved their disputes and moved to terminate. See IPR2014-00646, Paper 18.
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`And, most importantly, it would give the Board the opportunity to issue just a single,
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`harmonized written decision that is based on a complete record, rather than possibly
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`having to issue two separate opinions, each based on partial records concerning the
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`same claims and the same prior art reference.
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`Accordingly, the Board should grant this motion to join the Toyota IPR and
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`the Mercedes IPR.
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`I.
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`BACKGROUND AND RELATED PROCEEDINGS
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`The ’057 patent is owned by AVS. On June 25, 2012, AVS filed a complaint
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`with the U.S. District Court for the Eastern District of Texas alleging that Toyota and
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`a number of related entities infringes certain claims of the ’057 patent.
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`On July 12, 2013, Toyota filed an IPR petition that ultimately resulted in the
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`Toyota IPR. Toyota’s petition sought review of claims 1-4, 7-10, 30-34, 37-41, 43, 46,
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`48, 49, 56, 59-62, and 64. (See IPR2013-0419, Paper No. 3.) Toyota’s petition was
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`granted, and this IPR was instituted on January 13, 2014. (See IPR2013-0419, Paper
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`No. 19.) The grounds instituted for review are as follows:
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` Claims 1-4, 7-10, 40, 41, 46, 48, 49, 56, 59-61, and 64 as anticipated by U.S.
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`6,553,130 to Lemelson (“Lemelson”);
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` Claims 30-34, 37-39, and 62 as obvious over Lemelson and U.S. 5,245,422
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`to Borcherts (“Borcherts”);
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` Claims 4, 43, and 59 as obvious over Lemelson and U.S. 5,214,408 to
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`Asayama (“Asayama”);
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` Claim 34 as obvious over Lemelson, Borcherts and Asayama; and
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` Claims 30, 32, and 37-39 as obvious over Japanese Unexamined Patent
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`Application Publication No. H06-124340 to Yamamura (“Yamamura”) and
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`Borcherts.
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`(Id. at 38.)
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`In responding to these proposed grounds of unpatentability, AVS argued that
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`Lemelson purportedly fails to disclose the “pattern recognition algorithm generated
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`from data of possible exterior objects and patterns of received waves from the
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`possible exterior objects” of claims 1-4, 7-10, 31, 41, 56, 59-61, 62 and 64 (the
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`“generated from” phases). (See IPR2013-0419, Paper 33, at 10-14.) According to
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`AVS, these claim limitations require a pattern recognition algorithm trained with data
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`from actual objects (i.e., “real” data), as opposed to simulated data and, therefore, the
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`claims are patentable over Lemelson. (Id. at 14-19.) On May 9, 2014, the Board
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`issued an order in which it prohibited Toyota from seeking discovery regarding “the
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`obviousness to one with ordinary skill in the art of the trained pattern recognition
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`claim feature in light of Lemelson.” (See IPR2013-0419, Paper No. 39, at 2.) Oral
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`argument in this proceeding was heard on August 18, 2014. As of the filing of this
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`motion, the Board had not yet rendered its final written decision.
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` On April 16, 2014, Mercedes filed its own IPR petition in connection with the
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`’057 patent. The Board granted Mercedes’ petition and instituted IPR on October 23,
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`2014. (See IPR2014-0646, Paper 13.) Claims 1, 2, 4, 7, 16, 30, 31, 40, 41, 43, 46, 56,
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`59–62, 77, 78, and 81–83 of the ’057 patent are at issue in Mercedes’ IPR. (See id. at
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`2.) The Mercedes IPR was instituted on the following grounds:
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` Claims 16, 40, 43, 46, 77, and 81–83 as anticipated by Lemelson;
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` Claims 1, 2, 4, 7, 41, 56, 59–61, and 78 as obvious over Lemelson;
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` Claims 1, 2, 4, 7, 41, 56, 59–61, and 78 as obvious over Lemelson and U.S.
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`5,541,590 to Nishio (“Nishio”);
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` Claims 30, 31, and 62 as obvious over Lemelson and Borcherts;
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` Claims 43 and 81 as obvious over Lemelson and Toshihiko Suzuki et al.,
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`Driving Environment Recognition for Active Safety, Toyota Technical
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`Review, Sept. 1993 (“Suzuki”);
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` Claims 60 and 82 as obvious over Lemelson and Walter Ulke et al., Radar
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`Based Automotive Obstacle Detection System, SAE Technical Paper Series,
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`Feb. 28–Mar. 3, 1994 (“Ulke”);
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` Claims 1, 16, and 56 as anticipated by Nishio;
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` Claims 2, 4, 40, 41, 43, 59, 77, 78, and 81 as obvious over Nishio and
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`Asayama;
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` Claims 7 and 61 as obvious over Nishio and Lemelson;
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` Claims 30, 31, and 62 as obvious over Nishio and Borcherts;
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` Claims 40, 43, 77, and 81 as anticipated by Yamamura; and
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` Claims 46 and 83 as obvious over Yamamura and Lemelson.
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` (See IPR2014-0646, at 35-36.) In granting Mercedes’ petition, the Board noted that it
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`does not believe Lemelson to be anticipatory of claims containing the “generated
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`from” limitation for the reasons argued by AVS in the Toyota IPR. The Board
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`explained, however, that Mercedes will likely be able to establish that the ’057 patent
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`claims containing these limitations are obvious in view of Lemelson either by itself or
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`in combination with secondary references. In particular, it would have been obvious
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`to one of ordinary skill in the art to train prior art pattern recognition systems, like
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`that disclosed by Lemelson, using “patterns of waves actually received from objects,”
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`i.e. “real data,” as AVS apparently believes the ’057 patent’s claims require. (See, e.g.,
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`id. at 18-19.) The Board issued a Scheduling Order on the same day it instituted the
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`Mercedes IPR. (See IPR2014-0646, Paper 14.) A hearing is scheduled for June 4,
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`2015. (Id.) In view of the date of institution, a final written decision would normally
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`be expected in October 2015. However, Mercedes and AVS have now moved to
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`terminate based upon a settlement. IPR2014-00646, Paper 18.
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`As noted above, Toyota filed a second IPR petition (IPR2015-00261) that
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`includes the same grounds that the Board found were likely to lead to the
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`unpatentability of the ’057 patent’s claims when it instituted the Mercedes IPR.
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`Toyota submitted a motion to join this new IPR, pending institution, with the
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`Mercedes IPR. On November 13, 2014, Toyota also filed a request for ex parte
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`reexamination of claims 1-4, 7-10, 31, 41, 56, 59-62, and 64 of the ’057 patent. That
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`ex parte request is limited to the obviousness of the ’057 patent over Lemelson, and
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`explains how the “generated from” claim language would have been obvious to one
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`of ordinary skill.
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`II.
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` ARGUMENT
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`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) provide the Board with the
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`discretionary ability to join IPR proceedings. A petitioner must file a motion for
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`joinder within one month of the institution of the IPR the petitioner is seeking to
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`join. 37 C.F.R. § 42.122(b). The Mercedes IPR was instituted October 23, 2014, and
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`this motion is being filed within one month from that date and is therefore timely.
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`Additionally, Toyota understands that no prior authorization is required to file a
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`joinder motion when it is within 30 days of institution. Taiwan Semiconductor Mfg. Co. v.
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`Zond, LLC, IPR2014-00781 and -782, Paper No. 5 at 3 (May 29, 2014).1
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`The applicable rules governing the filing and progress of IPRs, including the
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`rules relating to joinder, are meant to “secure the just, speedy, and inexpensive
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`resolution of every proceeding.” 37 C.F.R. § 42.1(b). See also 35 U.S.C. § 316(b)
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`(requiring the Director to consider the “integrity of the patent system” when drafting
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`regulations implementing the IPR statutes). Joinder of this IPR proceeding with the
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`Mercedes IPR will further these goals.
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`1.
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`Joinder of the Toyota IPR and Mercedes IPR Will Not Delay the
`Board’s Ultimate Decision of the Patentability of Claims 1, 2, 4, 7,
`30-31, 40-41, 43, 46, 56 and 59-62 Over Lemelson and Will Ensure
`that the Board Makes its Patentability Determination Based on a
`Complete Record
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`Both the Toyota IPR and the Mercedes IPR have instituted review of claims 1,
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`2, 4, 7, 30-31, 40-41, 43, 46, 56 and 59-62 of the ’057 patent, and are primarily based
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`on the Lemelson reference.2 Accordingly, if the Board were to find some of the
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`Additionally, in Gillette Co. v. Zond, LLC, IPR2014-01016, Paper No. 13 (Nov.
`1
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`10, 2014), the Board granted Gillette’s renewed joinder motion without pre-
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`authorization.
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`2
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`The Toyota IPR additionally includes grounds for unpatentability of dependent
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`claims 3, 8-10 and 64 based on references cited in the Mercedes IPR while the
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`Mercedes IPR additionally includes claims 16, 77-78, and 81-83.
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`-8-
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`challenged claims in the Toyota IPR not to be unpatentable, joining the two
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`proceedings will not delay ultimate resolution of the patentability of these claims. The
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`Board can issue a single final written decision in or before October 2015 (one year
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`from institution of the Mercedes IPR) addressing all patentability issues based on
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`Lemelson. In these circumstances, if the Board finds some claims not to be
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`unpatentable, there is no advantage for the Board to issue piecemeal final written
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`decisions, first addressing the Toyota IPR and then separately addressing Mercedes
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`IPR, and inevitably re-hashing many of the same issues already discussed in the
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`Toyota IPR. Moreover, it is possible that, absent joinder, the Board could have
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`conflicting evidence available from the different experts involved in the different IPR
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`proceedings. Joinder of the Toyota IPR and Mercedes IPR would simply consolidate
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`the issues such that the Board can weigh all of the evidence at one time and issue a
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`single final decision based on all patentability issues involving Lemelson (i.e., in
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`October 2015 when a final written decision will be due).
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`Joinder will also ensure that the Board has access to a complete record when
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`assessing the patentability of the ’057 patent’s claims. Again, as noted above, the
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`Toyota IPR asserts that Lemelson anticipates the ’057 patent’s claims. The Mercedes
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`IPR, however, will address whether Lemelson renders the claims, including the
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`“generated from” limitation, obvious. Thus, joinder of these two IPRs will provide
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`the Board with the ability to assess all the patentability arguments that have been
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`presented by parties challenging the ’057 patent’s claims together. This will in turn
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`avoid the potentially conflicting results that could arise if the Board addresses
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`anticipation by Lemelson first. If the Board takes this piecemeal approach, it is
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`possible that it will issue a preliminary decision determining that the ’057 patent’s
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`claims are not unpatentable on the anticipation grounds at issue in Toyota’s IPR even
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`though it believes those same claims are likely unpatenable on the obviousness
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`grounds at issue in the Mercedes IPR. Joinder would avoid this result.
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`2.
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`Joinder of the Toyota IPR and Mercedes IPR Will Allow Toyota to
`Participate Throughout the Proceeding without the Need for a
`Complicated Estoppel Dispute
`
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`As noted above, Toyota has already moved to join its new petition, IPR2015-
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`
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`00261, with the Mercedes IPR. The reason that Toyota is filing this second joinder
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`motion to consolidate the Toyota IPR with the Mercedes IPR is to ensure that it can
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`participate in the Mercedes IPR without the possible need to engage in a complicated
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`estoppel dispute with AVS.
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`Even if the Board grants Toyota’s motion to join IPR2015-00261 with the
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`Mercedes IPR, absent further consolidation with the Toyota IPR, the parties may
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`have to dispute the scope of the estoppel provisions of 35 U.S.C. § 315(b) if a final
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`written decision issues in the Toyota IPR which upholds any claims.
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`Toyota does not believe that it will be estopped from maintaining IPR2015-
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`00261. This new petition is limited to the obviousness of the “generated from” claim
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`phrase over Lemelson in view of the knowledge of one of ordinary skill in the art or
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`other secondary references, which is an issue that Toyota was barred from arguing
`-10-
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`during the Toyota IPR. Specifically, in its Patent Owner response in the Toyota IPR,
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`AVS took the position that the “generated from” claim phrases were limited to
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`training with “real” data and that Lemelson’s disclosure of training with “known
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`inputs” was too vague to explicitly disclose that phrase, as construed. (IPR2013-
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`00419, Paper 33 at pp. 12-22.) AVS further asserted that, because Toyota had not
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`presented an obviousness position in its petition relating to the “generated from”
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`phrase, it was procedurally barred from addressing it during the IPR. This dispute
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`culminated during the deposition of AVS’s expert, when Toyota sought to ask
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`questions relating to the obviousness of the “generated from” phrase. AVS stopped
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`the line of questioning and moved for a Protective Order. The Board granted AVS’s
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`motion, stating: “We grant the request of Patent Owner to limit the questioning of
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`Dr. Koutsougeras, on cross-examination, by barring questions inquiring about the
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`witness’s opinion on the obviousness to one with ordinary skill in the art of the
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`trained pattern recognition claim feature in light of Lemelson.” (IPR2013-00419,
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`Paper 39 at p. 2.) Accordingly, in Toyota’s view, it has not yet had the opportunity to
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`argue that the “generated from” phrase is obvious, in view of the claim construction
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`position that AVS has taken, and the arguments that AVS has made about Lemelson.
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`Granting this joinder motion (and Toyota’s motion to join IPR2015-00261)
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`would ensure that Toyota has the procedural opportunity to address AVS’s arguments
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`about the “generated from” phrase on the merits. Importantly, Toyota is not seeking
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`a second opportunity to address any of the same arguments that it made during the
`-11-
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`Toyota IPR. Rather, as detailed in Toyota’s petition in IPR2015-00261, Toyota
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`simply requests the opportunity to argue to the Board that it would have been
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`obvious to generate the claimed algorithm with “real” data, even if not explicitly
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`disclosed by Lemelson.
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`Joinder of the Toyota IPR and the Mercedes IPR will give Toyota the
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`procedural opportunity to make those arguments on the merits without the Board
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`having to resolve complicated estoppel issues.
`
`3.
`
`Joinder of the Toyota IPR and the Mercedes IPR is Permissible
`Under the AIA and Will Further Congressional Directives to
`Ensure the Integrity of the Patent System and the Efficient
`Administration of the Office
`
`
`Ordinarily, inter partes review proceedings must be completed no later than one
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`year after institution. 35 U.S.C. § 316(a)(11) This time period is extendable by up to 6
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`months with good cause. 35 U.S.C. § 316(a)(11). However, the statute explicitly
`
`provides that these time periods may be adjusted even further in the case of joinder
`
`under section 315(c). Id. 37 C.F.R. § 42.100(c) implements this statutory provision
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`and provides that the deadline may be “adjusted by the Board in the case of joinder.”
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`Accordingly, if the Board grants this joinder motion, it will have the authority to issue
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`a single final written decision concerning the patentability of the challenged ’057
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`patent claims at the ultimate conclusion of the consolidated proceedings. Doing so
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`would serve the public interest, and Congress’s directives to consider the “integrity of
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`-12-
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`the patent system” and the “efficient administration of the Office.” 35 U.S.C. §
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`316(b).
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`The public has an interest in ensuring that important questions of patentability
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`are resolved on the merits and on a full record. In the Mercedes IPR, the Board has
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`already determined that there is a reasonable likelihood that claims 1, 2, 4, 7, 16, 30,
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`31, 40, 41, 43, 46, 56, 59–62, 77, 78, and 81–83 will be found to be unpatentable based
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`on the Lemelson reference. Toyota has filed a new petition in IPR2015-00261 along
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`with a motion to join that new petition to the Mercedes IPR. But, even if the Board
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`joins IPR2015-00261, absent the additional consolidation of this Toyota IPR and the
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`Mercedes IPR, Toyota may have to dispute application of estoppel under 35 U.S.C. §
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`315 if a final written decision is issued upholding any of the claims. While this may
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`not be a public interest concern so long as Mercedes is participating in the proceeding,
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`AVS and Mercedes have now settled. IPR2014-00646, Paper 18. If that happens,
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`then joinder of the Toyota IPR and the Mercedes IPR will avoid complicated and
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`burdensome estoppel disputes and would ensure that the Board could consider all of
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`the evidence from the perspectives of both the Patent Owner and a Petitioner.
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`Additionally, joining the Toyota IPR and the Mercedes IPR would further the
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`“efficient administration of the Office” since it would allow the Board to issue just a
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`single final written decision regarding the patentability of the challenged claims of the
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`’057 patent. It would also allow the Board to consider and harmonize all of the
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`-13-
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`relevant evidence, rather than separately deal with different evidence in the different
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`proceedings with might point in different patentability directions.
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`III. CONCLUSION
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`For the foregoing reasons, Toyota respectfully requests that the Toyota IPR be
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`joined with the Mercedes IPR.
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`Dated: November 20, 2014
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`
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`
`
`
`
`
` /Matt Berkowitz/
`Matt Berkowitz (Reg. No. 57,215)
`A. Antony Pfeffer (Reg. No. 43,857)
`Thomas R. Makin
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212.425.7200
`Fax. 212.425-5288
`Attorney for Petitioner,
`Toyota Motor Corporation
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`-14-
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing motion for joinder was
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`served on November 20, 2014 via email upon the following counsel of record for
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`Patent Owner.
`
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`AVS-IPR@mcandrews-ip.com
`MCANDREWS HELD & MALLOY, LTD.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`
`
`
`/Matt Berkowitz/
`Matt Berkowitz (Reg. No. 57,215)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax: 212-425-5288
`
`
`
`
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