`Entered: December 8, 2014
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`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 IPR2013-00424
`Patent 5,845,000
`____________
`
`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)
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`
`I. INTRODUCTION
`Toyota Motor Corporation (“Toyota”) filed a petition for inter partes
`review of U.S. Patent No. 5,845,000 (Ex. 1001, “the ’000 Patent”) on July
`12, 2013. Paper 2 (“Pet.”). On January 14, 2014, the Board instituted inter
`partes review on all of the challenged claims of the ’000 Patent. Paper 16
`(“Toyota IPR”). American Vehicular Sciences LLC (“AVS”) filed a Patent
`Owner Response on March 24, 2014. Paper 29. Toyota filed a Reply on
`June 2, 2014. Paper 34. Oral argument was held on August 18, 2014. Paper
`37. The statutory due date for a final written decision is January 14, 2015,
`which is one year from the date of institution of trial. See 35 U.S.C.
`§ 316(a)(11). The Board can issue a final written decision prior to the
`January 14, 2015, due date. At this point, trial before the Board in the
`Toyota IPR is over except for the issuance of a final written decision.
`More than three months after the date of oral argument, and less than
`two months from the statutory due date of a final written decision, Toyota
`filed a Motion for Joinder (Paper 43, “Mot”) on November 20, 2014,
`requesting that this proceeding be joined with IPR2014-00647. In IPR2014-
`00647, the Board instituted inter partes review of the ’000 Patent on October
`23, 2014, on a petition filed by Mercedes-Benz USA, LLC (“Mercedes-
`Benz”). The trial for IPR2014-00647 (“Mercedes IPR”) is in its beginning
`stage, still six months away from the scheduled date of oral argument in that
`proceeding. On November 19, 2014, in IPR2014-00647, Mercedes-Benz
`and AVS filed a Joint Motion to Terminate.
`For reasons discussed below, Toyota’s Motion for Joinder is denied.1
`
`
`1 This decision is rendered without consideration of AVS’s Opposition.
`
` 2
`
`
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`
`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
`respect to what a motion for joinder should discuss is provided in Frequently
`Asked Question (“FAQ”) H5 on the Board’s website at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp. Toyota correctly states:
`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. 7. We are unpersuaded, however, by Toyota’s contention that
`“[j]oinder of this IPR proceeding with the Mercedes IPR will further these
`goals [i.e., the just, speedy, and inexpensive resolution of every
`proceeding].” Id.
`
`1.
`Toyota asserts: “Joinder of the Toyota IPR and Mercedes IPR would
`
`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 October
`2015 when a final written decision will be due in the Mercedes IPR) and on
`a complete and harmonized record.” Mot. 1. The assertion is misplaced.
`
`In this proceeding, Toyota has participated in a full trial and simply is
`waiting for the issuance of a final written decision by the Board. In contrast,
`the trial in the Mercedes IPR is only just starting. Joinder of the Toyota IPR
`and the Mercedes IPR would not “resolve[] all [the issues] at once” by
`having a common trial in the first instance, but instead it would dilute the
`effects and consequences of a first trial by mixing the already complete
`
` 3
`
`
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`record of this proceeding with that to be developed in the Mercedes IPR.
`The Mercedes IPR involves some of the same grounds involved in this
`proceeding for some claims, as well as grounds not involved in this
`proceeding. Essentially, Toyota is asking for a new trial in which the
`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
`January 14, 2015, without any further cost to either party. Toyota does not
`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
`again with a new trial in which to raise new issues and receive new
`evidence. Toyota states:
`
`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
`that matter is not precluded, prejudices AVS, particularly when the parties in
`the Mercedes IPR have filed a Joint Motion to Terminate. Toyota has
`participated fully in this trial, from beginning to end, and offers no
`persuasive reason for the Board to grant Toyota, in effect, a new trial.
`
` 4
`
`
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`Whether or not Toyota intends to “re-argue” in the Mercedes IPR the
`
`points it already made in this trial, if the Motion for Joinder is granted, the
`record established by Toyota in this trial will not be preserved in isolation
`for subsequent decision. Rather, it will be mixed with the developing record
`in the Mercedes IPR. Toyota incorrectly refers to that as acquiring a
`complete and harmonized record (Mot. 1, 3). It is, instead, inappropriate
`mixing of the records of two trials, effectively nullifying the consequences
`of the first trial. Contrary to the assertion of Toyota (Mot. 1), such an
`approach is neither practical nor equitable. Moreover, even if,
`hypothetically, a scheme can be devised to preserve the record of this trial,
`in isolation, for subsequent decision when the Mercedes IPR is ready for
`issuance of a final written decision, that amounts to a stay of this proceeding
`and a resulting delay of ten months or more, without good cause.
`2.
`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:
`
`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—
`IPR2015-00262—if it is joined with the Mercedes IPR.
`
`Mot. 1–2. To provide context for the above-quoted text, we note that Toyota
`has filed a new petition for inter partes review of the ’000 patent, in
`IPR2015-00262, and has filed a motion for joinder in that proceeding to
`
` 5
`
`
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`have IPR2015-00262 joined with the Mercedes IPR. The estoppel issues
`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.
`
`We understand Toyota’s concern about potential estoppel effects of
`
`any final written decision in this proceeding on its newly filed petition in
`IPR2015-00262, and recognize that the estoppel issue potentially may arise
`during the course of proceeding in IPR2015-00262 or in related district court
`action between the parties. Nevertheless, the Board cannot favor either the
`Petitioner or Patent Owner, in any case and under any circumstance. It
`would be inappropriate for the Board to moot an issue which only can
`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
`founded.
`
`3.
`Toyota further asserts that joining the Toyota IPR and the Mercedes
`
`IPR would further the “efficient administration of the Office” because it
`would allow the Board to issue just a single final written decision regarding
`the patentability of the challenged claims of the ’000 patent. Mot. 13. That
`is not the case, for several reasons. First, as discussed above, this
`proceeding is already complete except for the issuance of a final written
`
` 6
`
`
`
`
`
`
`
`IPR2013-00424
`Patent 5,845,000
`
`decision, while the Mercedes IPR is just beginning. Second, there is some,
`but not a substantial overlap between this proceeding and the Mercedes IPR.
`Many of the alleged grounds in the Mercedes IPR are not involved in this
`proceeding, and many of the grounds involved in this proceeding are not
`involved in the Mercedes IPR. Third, neither allowing Toyota to argue more
`issues at this stage nor allowing Mercedes to argue more issues than it
`alleged in the Mercedes IPR promotes “efficient administration of the
`Office.”
`
`III. CONCLUSION
`For the foregoing reasons, Toyota’s Motion for Joinder is denied.
`
`
`
`
`
`PETITIONER:
`Matthew Berkowitz
`A. Antony Pfeffer
`Thomas Makin
`mberkowitz@kenyon.com
`apfeffer@kenyon.com
`tmakin@kenyon.com
`
`PATENT OWNER:
`Thomas Wimbiscus
`Christopher Scharff
`Scott McBride
`twimbiscus@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
` 7