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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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`Patent No. 5,845,000
`Issue Date: December 1, 1998
`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`__________________________________________________________________
`
`MOTION FOR JOINDER
`PURSUANT TO 35 U.S.C. § 315(C) AND
`37 C.F.R. §§ 42.22 AND 42.122(B)
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`Case No. IPR2013-00424
`__________________________________________________________________
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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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`IPR2013-0424 (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. IPR2014-00647 (the “Mercedes IPR,” or “Mercedes’ IPR”). Both
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`proceedings relate to U.S. Patent No. 5,845,000 (“the ’000 patent”), cover nearly
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`identical claim sets, and are primarily based on the same prior art reference—U.S.
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`Patent No. 6,553,130 to Lemelson (“Lemelson”). This is the second joinder motion
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`that Toyota has filed with respect to the Mercedes IPR; Toyota has separately filed a
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`motion to join a new petition—IPR2015-00262—with the Mercedes 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, both IPRs cover claims 10, 11, 16, 17, 19, 20 and 23 of the ’000 patent,
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`and are primarily based on the Lemelson reference. Joinder of the Toyota IPR and
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`Mercedes IPR would simply consolidate the issues such that the patentability of the
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`claims over Lemelson is resolved all at once (i.e., in October 2015 when a final written
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`decision will be due in the Mercedes IPR) and on a complete and harmonized record.
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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—IPR2015-00262—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 IPR2015-00262 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 IPR2014-00647, Paper 17.
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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 ’000 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 ’000 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 with claims 10, 11, 16, 17, 19,
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`20, and 23. (See IPR2013-0424, Paper No. 2.) Toyota’s petition was granted, and this
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`IPR was instituted on January 14, 2014. (See IPR2013-0424, Paper No. 16.) The
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`grounds instituted for review are as follows:
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`Claims 10, 11, 19, and 23 as anticipated by U.S. 6,553,130 to Lemelson
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`(“Lemelson”);
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`Claims 10, 11, 19, and 23 as obvious over Lemelson and U.S. 5,214,408
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`to Asayama (“Asayama”); and
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`Claims 16, 17, and 20 as obvious over Lemelson and Japanese
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`Unexamined Patent Application Publication No. S62-131837 to
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`Yanagawa (“Yanagawa”).
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`(Id. at 45.)
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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 electromagnetic
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`illumination from the possible exterior objects” of claims 10, 11, 19, and 23 and the
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`“pattern recognition algorithm generated from data of possible sources of radiation
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`including lights of vehicles and patterns of received radiation from the possible
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`sources” of claims 16, 17, and 20 (the “generated from” phrases) (See IPR2013-0424,
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`Paper 29, at 12-14). According to AVS, these claim limitations require a pattern
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`recognition algorithm trained with data from actual objects (i.e., “real” data), as
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`opposed to simulated data and, therefore, the claims are patentable over Lemelson.
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`(Id.) On May 9, 2014, the Board issued an order in which it prohibited Toyota from
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`seeking discovery regarding “the obviousness to one with ordinary skill in the art of
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`the trained pattern recognition claim feature in light of Lemelson.” (See IPR2013-
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`0424, Paper No. 33, at 1.) Oral argument in this proceeding was heard on August 18,
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`2014. As of the filing of this motion, the Board had not yet rendered its final written
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`decision.
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` On April 16, 2014, Mercedes filed its own IPR petition in connection with the
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`’000 patent. The Board granted Mercedes’ petition and instituted IPR on October 23,
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`2014. (See IPR2014-0647, Paper 13.) Claims 10, 11, 15, 16, 17, 19, 20, and 23 of the
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`’000 patent are at issue in Mercedes’ IPR. (See id. at 2.) IPR was instituted on the
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`following grounds:
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`Claims 10, 11, 15, 19, and 23 as obvious over Lemelson;
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`Claims 10, 11, 15, 19, and 23 as obvious over Lemelson and U.S.
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`5,541,590 to Nishio (“Nishio”);
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`Claims 10, 11, 15, 19, and 23 as obvious over Lemelson and Asayama;
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`Claims 16, 17, and 20 as obvious over Lemelson and Yanagawa;
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`Claims 10, 15, 19, and 23 as obvious over Nishio;
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`Claims 10, 15, 19, and 23 as obvious over Nishio and Asayama;
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`Claims 10, 15, 16, 17, 19, 20, and 23 as obvious over Nishio and
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`Yanagawa; and
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`Claims 10, 11, 15, 19, and 23 as obvious over Nishio and Lemelson.
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`(See IPR2014-0647, at 16-28.) In granting Mercedes’ petition, the Board noted that it
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`does not believe Lemelson to be anticipatory for the reasons argued by AVS in the
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`Toyota IPR. The Board explained, however, that Mercedes will likely be able to
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`establish that the ’000 patent’s claims are obvious in view of Lemelson either by itself
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`or in combination with secondary references. In particular, it would have been
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`obvious to one of ordinary skill in the art to train prior art pattern recognition
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`systems, like that disclosed by Lemelson, using “real data,” as AVS apparently believes
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`the ’000 patent’s claims require. (See, e.g., id. at 16-17.) The Board issued a Scheduling
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`Order on the same day it instituted Mercedes IPR. (See IPR2014-0647, Paper 14.) A
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`hearing is scheduled for June 4, 2015. (Id.) In view of the date of institution, a final
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`written decision is expected in October 2015. Mercedes and AVS have now moved
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`to terminate based upon a settlement. IPR2014-00647, Paper 17.
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`As noted above, Toyota filed a second IPR petition (IPR2015-00262) 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 ’000 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 10, 11, 16, 17, 19, 20 and 23 of the ’000 patent. That ex parte
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`request is limited to the obviousness of the ’000 patent over Lemelson, and explains
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`how the “generated from” claim language would have been obvious to one of
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`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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`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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`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 10, 11, 16,
`17, 19, 20 and 23 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 cover claims 10, 11, 16, 17, 19, 20
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`and 23 of the ’000 patent, and are primarily based on the Lemelson reference.
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`Accordingly, if the Board were to find some of the challenged claims in the Toyota
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`IPR not to be unpatentable, joining the two proceedings will not delay ultimate
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`resolution of the patentability of these claims. The Board can issue a single final
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`written decision in or before October 2015 (one year from institution of the Mercedes
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`IPR) addressing all patentability issues based on Lemelson. In these circumstances, if
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`the Board finds some claims not to be unpatentable, there is no advantage for the
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`Board to issue piecemeal final written decisions, first addressing the Toyota IPR and
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`then separately addressing the Mercedes IPR, and inevitably re-hashing many of the
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`same issues already discussed in the Toyota IPR. Moreover, it is possible that, absent
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`joinder, the Board could have conflicting evidence available from the different experts
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`involved in the different IPR proceedings. Joinder of the Toyota IPR and the
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`Mercedes IPR would simply consolidate the issues such that the Board can weigh all
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`of the evidence at one time and issue a single final decision based on all patentability
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`issues involving Lemelson (i.e., in October 2015 when a final written decision will be
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`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 ’000 patent’s claims. Again, as noted above, the
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`Toyota IPR asserts that Lemelson anticipates the ’000 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 ’000 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 ’000 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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`00262, 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 IPR2015-00262 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 estoppel provisions of 35 U.S.C. § 315(b) if a final written
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`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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`00262 This new petition is limited to the obviousness of the “generated from” claim
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`phrase in view of Lemelson, which is an issue that Toyota was barred from arguing
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`during the Toyota IPR. Specifically, in its Patent Owner response, AVS took the
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`position that the “generated from” claim phrases were limited to training with “real”
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`data and that Lemelson’s disclosure of training with “known inputs” was too vague to
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`explicitly disclose that phrase, as construed. (IPR2013-00424, Paper 29, at pp. 12-21.)
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`AVS further asserted that, because Toyota had not presented an obviousness position
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`in its petition relating to the “generated from” phrase, it was procedurally barred from
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`addressing it during the IPR. This dispute culminated during the deposition of AVS’s
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`expert, when Toyota sought to ask questions relating to the obviousness of the
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`“generated from” phrase. AVS stopped the line of questioning and moved for a
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`Protective Order. The Board granted AVS’s motion, stating: “We grant the request of
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`Patent Owner to limit the questioning of Dr. Koutsougeras, on cross-examination, by
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`barring questions inquiring about the witness’s opinion on the obviousness to one
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`with ordinary skill in the art of the trained pattern recognition claim feature in light of
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`Lemelson.” IPR2013-00424, Paper 33 at p. 2. Accordingly, in Toyota’s view, it has
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`not yet had the opportunity to argue that the “generated from” phrase is obvious, in
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`view of the claim construction position that AVS has taken, and the arguments that
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`AVS has made about Lemelson.
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`Granting this joinder motion (and Toyota’s motion to join IPR2015-00262)
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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
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`Toyota IPR. Rather, as detailed in Toyota’s petition in IPR2015-00262, 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.
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`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
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`provides that these time periods may be adjusted even further in the case of joinder
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`-11-
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`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 ’000
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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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`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 10, 11, 16, 17, 19,
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`20 and 23 will be found to be unpatentable based on the Lemelson reference. Toyota
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`has filed a new petition in IPR2015-00262 along with a motion to join that new
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`petition to the Mercedes IPR. But, even if the Board joins IPR2015-00262, absent the
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`additional consolidation of this Toyota IPR and the Mercedes IPR, Toyota may have
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`to dispute application of estoppel under 35 U.S.C. § 315 if a final written decision is
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`issued upholding any of the claims. While this may not be a public interest concern
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`so long as Mercedes is participating in the proceeding, AVS and Mercedes have now
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`settled. IPR2014-00647, Paper 17. If that happens, then joinder of the Toyota IPR
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`and the Mercedes IPR will avoid complicated and burdensome estoppel disputes and
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`-12-
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`would ensure that the Board could consider all of the evidence from the perspectives
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`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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`’000 patent. It would also allow the Board to consider and harmonize all of the
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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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`
`
` /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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`-13-
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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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