`Entered: December 12, 2014
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`Trials@uspto.gov
`Tel: 571-272-7822
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`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.
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`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.05
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`
`
`
`
`IPR2013-00419
`Patent 6,772,057 B2
`
`
`Introduction
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`This inter partes review was instituted on January 13, 2014. Paper
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`13. Oral argument was held on August 18, 2014. Paper 47. A final written
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`decision is expected on or prior to January 13, 2015. 35 U.S.C.
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`§ 316(a)(11). On December 9, 2014, a conference call was held among
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`respective counsel for the parties and Judges Lee, Jefferson, and Pettigrew.
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`Patent Owner initiated the conference call to request authorization to file a
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`Motion to Terminate Reexamination Proceeding. The motion would seek
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`termination not of this proceeding, but an ex parte reexamination proceeding
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`recently requested by Petitioner for U.S. Patent No. 6,772,057 (“the ’057
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`patent”), on November 13, 2014, Reexamination Control No. 90/020,077.
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`Discussion
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`
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`Counsel for Patent Owner explained that Petitioner’s recently filed
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`request for ex parte reexamination amounts to yet another bite of the apple
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`by Petitioner, noting this proceeding, and also IPR2015-00261, filed by
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`Petitioner on November 17, 2014, both directed to the ’057 patent. Patent
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`Owner would request, in its motion, that we exercise authority under
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`35 U.S.C. § 315(d) to terminate the ex parte reexamination proceeding
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`requested by Petitioner. According to Patent Owner, the multiple
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`proceedings attempted to be instituted by Petitioner are abusive. Also
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`according to Patent Owner, the estoppel provision of 35 U.S.C. § 315(e)(1)
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`applies to preclude Petitioner from requesting or maintaining another
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`proceeding before the U.S. Patent and Trademark Office.
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`
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`Notwithstanding the above-noted contentions, counsel for Patent
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`Owner concedes that nothing from any potential reexamination proceeding
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`to be ordered on the basis of Petitioner’s request for ex parte reexamination
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`
`
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`IPR2013-00419
`Patent 6,772,057 B2
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`possibly can affect the final written decision in this proceeding. Also, we
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`note that no reexamination proceeding has been ordered for the ’057 patent
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`based on the recently filed request for reexamination. For both of these
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`reasons, there is no occasion for Patent Owner to file, in this proceeding, a
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`Motion to Terminate Reexamination which seeks to terminate a
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`reexamination proceeding.
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`Conclusion
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`
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`It is ORDERED that Patent Owner is not authorized to file, in this
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`proceeding, a Motion to Terminate Reexamination.
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`
`
` PETITIONER:
`
`Matthew Berkowitz
`Antony Pfeffer
`Thomas Makin
`mberkowitz@kenyon.com
`apfeffer@kenyon.com
`tmakin@kenyon.com
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`
`
`PATENT OWNER:
`
`Thomas Wimbiscus
`Christopher Scharff
`Scott McBride
`twimbiscus@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`
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