Trials@uspto.gov
`Tel: 571-272-7822
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`
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`
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`Paper 54
`Entered: December 5, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00419
`Patent 6,772,057 B2
`____________
`
`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 54
`Entered: December 5, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00419
`Patent 6,772,057 B2
`____________
`
`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2013-00419
`Patent 6,772,057 B2
`
`
`I. INTRODUCTION
`
`Toyota Motor Corporation (“Toyota”) filed a petition for inter partes
`
`review of U.S. Patent No. 6,772,057 B2 (Ex. 1001, “the ’057 Patent”) on
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`July 12, 2013. Paper 3 (“Pet.”). On January 13, 2014, the Board instituted
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`inter partes review on all of the challenged claims of the ’057 Patent.
`
`Paper 19 (“Toyota IPR”). American Vehicular Sciences LLC (“AVS”)
`
`filed a Patent Owner Response on March 20, 2014. Paper 33. Toyota
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`filed a Reply on May 27, 2014. Paper 40. Oral argument was held on
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`August 18, 2014. Paper 47. The statutory due date for a final written
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`decision is January 13, 2015, which is one year from the date of institution
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`of trial. See 35 U.S.C. § 316(a)(11). The Board can issue a final written
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`decision prior to the January 13, 2015 due date. At this point, trial before
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`the Board in the Toyota IPR is over except for the issuance of a final written
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`decision.
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`More than three months after the date of oral argument, and less than
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`two months from the statutory due date of a final written decision, Toyota
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`filed a Motion for Joinder (Paper 52, “Mot”) on November 20, 2014,
`
`requesting that this proceeding be joined with IPR2014-00646. In IPR2014-
`
`00646, the Board instituted inter partes review of the ’057 Patent on
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`October 23, 2014, on a petition filed by Mercedes-Benz USA, LLC
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`(“Mercedes-Benz”). The trial for IPR2014-00646 (“Mercedes IPR”) is in its
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`beginning stage, still six months away from the scheduled date of oral
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`argument in that proceeding. On November 19, 2014, in IPR2014-00646,
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`Mercedes-Benz and AVS filed a Joint Motion to Terminate.
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`IPR2013-00419
`Patent 6,772,057 B2
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`For reasons discussed below, Toyota’s Motion for Joinder is denied.1
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`II. DISCUSSION
`
`The statutory provision governing joinder of inter partes review
`
`proceedings is 35 U.S.C. § 315(c). As the movant, Toyota bears the burden
`
`to show that joinder is appropriate. 37 C.F.R. § 42.20(c). Guidance with
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`respect to what a motion for joinder should discuss is provided in Frequently
`
`Asked Question (“FAQ”) H5 on the Board’s website at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp. Toyota correctly states:
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`The applicable rules governing the filing and progress of IPRs,
`including the rules relating to joinder, are meant to “secure the
`just, speedy, and inexpensive resolution of every proceeding.”
`37 C.F.R. § 42.1(b).
`
`Mot. 8. We are unpersuaded, however, by Toyota’s contention that
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`“[j]oinder of this proceeding with the Mercedes IPR will further these goals
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`[i.e., the just, speedy, and inexpensive resolution of every proceeding].” Id.
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`1.
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`
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`Toyota asserts: “Joinder of the Toyota IPR and Mercedes IPR would
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`simply consolidate the issues such that the patentability of the claims over
`
`Lemelson [U.S. Patent No. 6,553,130] is resolved all at once (i.e., in
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`October 2015 when a final written decision will be due in the Mercedes IPR)
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`and on a complete and harmonized record.” Mot. 1. The assertion is
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`misplaced.
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`
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`In this proceeding, Toyota has participated in a full trial and simply is
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`waiting for the issuance of a final written decision by the Board. In contrast,
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`the trial in the Mercedes IPR is only just starting. Joinder of the Toyota IPR
`
`
`1 This decision is rendered without consideration of AVS’s Opposition.
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`IPR2013-00419
`Patent 6,772,057 B2
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`and the Mercedes IPR would not “resolve[] all [the issues] at once” by
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`having a common trial in the first instance, but instead it would dilute the
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`effects and consequences of a first trial by mixing the already complete
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`record of this proceeding with that to be developed in the Mercedes IPR.
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`The Mercedes IPR involves some of the same grounds involved in this
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`proceeding for some claims, as well as grounds not involved in this
`
`proceeding. Essentially, Toyota is asking for a new trial in which the
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`records of this proceeding will be incorporated. Such a proposal does not
`
`promote any one of the three above-stated goals of obtaining a just, speedy,
`
`and inexpensive resolution of every proceeding.
`
`
`
`The Board is in the midst of preparing the final written decision in this
`
`proceeding, which is expected to issue prior to the statutory due date of
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`January 13, 2015, without any further cost to either party. Toyota does not
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`explain adequately how it would be just to allow Toyota to escape the
`
`consequences of the trial Toyota requested and engaged in, and to start over
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`again with a new trial in which to raise new issues and receive new
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`evidence. Toyota states:
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`Toyota is not trying to re-argue any of the same positions
`
`it took in the Toyota IPR. Toyota simply requests the
`procedural opportunity to argue that claims containing the
`“generated from” language would have been obvious in view of
`Lemelson, to the extent it has been effectively barred from
`arguing this obviousness position during the Toyota IPR.
`
`Mot. 2. Allowing Toyota, who is otherwise precluded from raising a new
`
`substantive matter in this proceeding, to join the Mercedes IPR, in which
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`that matter is not precluded, prejudices AVS, particularly when the parties in
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`the Mercedes IPR have filed a Joint Motion to Terminate. Toyota has
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`IPR2013-00419
`Patent 6,772,057 B2
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`participated fully in this trial, from beginning to end, and offers no
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`persuasive reason for the Board to grant Toyota, in effect, a new trial.
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`
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`Whether or not Toyota intends to “re-argue” in the Mercedes IPR the
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`points it already made in this trial, if the Motion for Joinder is granted, the
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`record established by Toyota in this trial will not be preserved in isolation
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`for subsequent decision. Rather, it will be mixed with the developing record
`
`in the Mercedes IPR. Toyota incorrectly refers to that as acquiring a
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`complete and harmonious record (Mot. 1, 3). It is, instead, inappropriate
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`mixing of the records of two trials, effectively nullifying the consequences
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`of the first trial. Contrary to the assertion of Toyota (Mot. 1), such an
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`approach is neither practical nor equitable. Moreover, even if,
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`hypothetically, a scheme can be devised to preserve the record of this trial,
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`in isolation, for subsequent decision when the Mercedes IPR is ready for
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`issuance of a final written decision, that amounts to a stay of this proceeding
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`and a resulting delay of ten months or more, without good cause.
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`2.
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`
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`Toyota also argues: “[J]oinder of the Toyota IPR and the Mercedes
`
`IPR would avoid any need to engage in briefing and analysis of complicated
`
`estoppel issues.” Mot. 2. Specifically, Toyota states:
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`Second, in the event that the Board concluded that one or
`
`more claims were not unpatentable based on the record in the
`Toyota IPR, granting this joinder motion will ensure that
`Toyota can participate throughout the Mercedes IPR without
`the need for the Board to address possible disputes regarding
`the scope of estoppel under 35 U.S.C. § 315(e)(1), in either
`district court or in connection with Toyota’s new petition—
`IPR2015-00261—if it is joined with the Mercedes IPR.
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`IPR2013-00419
`Patent 6,772,057 B2
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`Mot. 2. To provide context for the above-quoted text, we note that Toyota
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`has filed a new petition for inter partes review of the ’057 patent, in
`
`IPR2015-00261, and has filed a motion for joinder in that proceeding to
`
`have IPR2015-00261 joined with the Mercedes IPR. The estoppel issues
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`referred to by Toyota stem from 35 U.S.C. § 315(e)(1), which provides:
`
`(e) Estoppel.—
` (1) Proceedings before the office.—The petitioner in an inter
`partes review of a claim in a patent under this chapter that
`results in a final written decision under section 318(a), or the
`real party in interest or privy of the petitioner, may not request
`or maintain a proceeding before the Office with respect to that
`claim on any ground that the petitioner raised or reasonably
`could have raised during that inter partes review.
`
`
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`We understand Toyota’s concern about potential estoppel effects of
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`any final written decision in this proceeding on its newly filed petition in
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`IPR2015-00261, and recognize that the estoppel issue potentially may arise
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`during the course of proceeding in IPR2015-00261 or in related district court
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`action between the parties. Nevertheless, the Board cannot favor either the
`
`Petitioner or Patent Owner, in any case and under any circumstance. It
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`would be inappropriate for the Board to moot an issue which only can
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`adversely impact one party, on the basis of administrative convenience, i.e.,
`
`avoiding a need to consider what the motion characterizes as “complicated
`
`estoppel issues,” if and when such issues arise. That rationale is not well
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`founded.
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`3.
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`
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`Toyota further asserts that joining the Toyota IPR and the Mercedes
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`IPR would further the “efficient administration of the Office” because it
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`would allow the Board to issue just a single final written decision regarding
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`IPR2013-00419
`Patent 6,772,057 B2
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`the patentability of the challenged claims of the ’057 patent. Mot. 13. That
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`is not the case, for several reasons. First, as discussed above, this
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`proceeding is already complete except for the issuance of a final written
`
`decision, while the Mercedes IPR is just beginning. Second, there is some,
`
`but not a substantial overlap between this proceeding and the Mercedes IPR.
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`Most of the alleged grounds in the Mercedes IPR are not involved in this
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`proceeding, and most of the grounds involved in this proceeding are not
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`involved in the Mercedes IPR. Third, neither allowing Toyota to argue more
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`issues at this stage nor allowing Mercedes to argue more issues than it
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`alleged in the Mercedes IPR promotes “efficient administration of the
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`Office.”
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`III. CONCLUSION
`
`For the foregoing reasons, Toyota’s Motion for Joinder is denied.
`
`
`
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`
`
`PETITIONER:
`
`Matthew Berkowitz
`Antony Pfeffer
`Thomas Makin
`mberkowitz@kenyon.com
`apfeffer@kenyon.com
`tmakin@kenyon.com
`
`PATENT OWNER:
`
`Thomas Wimbiscus
`Christopher Scharff
`twimbiscus@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
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