Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 14
`Date Entered: April 10, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR NORTH AMERICA, INC. ET AL.
`Petitioner
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2014-00280
`Patent 6,324,463
`____________
`
`
`
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`
`
`
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`

`
`Case IPR2014-00280
`Patent 6,324,463
`
`
`1. Introduction
`A conference call was held on April 9, 2014 between Judges Cocks, Jung,
`
`and Hoskins and counsel for the respective parties. Petitioner, Toyota Motor North
`America, Inc. et al., (“Petitioner” or “Toyota”) was represented by lead counsel
`William Mandir. Patent Owner, Cruise Control Technologies, LLC, was
`represented by lead counsel John Kasha. Also present on the call was counsel
`representing Petitioners in four separate related inter partes review proceedings:
`IPR2014-00279; IPR2014-00281; IPR2014-00289; and IPR2014-00291. The
`respective Petitioners for those proceedings are as follows:
`
`IPR2014-00279 – Subaru of America, Inc. et al. (“Subaru”)
`
`IPR2014-00281 – Ford Motor Co. et al. (“Ford”);
`
`IPR2014-00289 – America Honda Motor Co., Inc. et al. (“Honda”); and
`
`IPR2014-00291 – Nissan North America, Inc. et al. (“Nissan”).
`
`Counsel for Patent Owner had requested the conference call seeking
`authorization to file a motion to join the following five inter partes review
`proceedings: IPR2014-00279; IPR2014-00280; IPR2014-00281; IPR2014-00289;
`and IPR2014-00291.
`
`2. Discussion
`During the conference call, counsel for Patent Owner expressed to the Board
`
`that it should be given permission to file a motion to join the above-noted five inter
`partes review proceedings because all of the proceedings are directed to U.S.
`Patent No. 6,324,463 (“the ’463 patent”) and all effectively include the same
`parties as Petitioners. In that regard, counsel for Patent Owner conveyed to the
`Board that while Toyota Motor North America, Inc. is listed as the first
`“Petitioner” in connection with IPR2014-00280, the collection of parties also listed
`
`
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`

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`Case IPR2014-00280
`Patent 6,324,463
`
`as “co-Petitioners” include each of Subaru, Ford, Honda, and Nissan, such that the
`Petitioner is seemingly the same as between all of the above-noted inter partes
`review proceedings. Counsel for Patent Owner thus urged, as a matter of judicial
`economy, that it be given leave to file a motion to join the five proceedings at this
`stage into a single proceeding. To that end, counsel for Patent Owner represented
`that a single panel of administrative patent judges would thereby be able to decide
`issues in connection with inter partes review of the ’463 patent rather than
`“fifteen” judges warranted for five separate proceedings, and be in a better position
`to recognize any potential redundancies.
`Counsel for Petitioner in this involved inter partes review proceeding, as
`
`well as representative counsels for the other four related inter partes review
`proceedings, indicated that a motion to join the proceedings would be opposed. To
`that end, the various counsel represented to the Board that the allegedly different
`Petitioners would likely not have the same interests in a single proceeding and may
`not be able to speak with a common voice in connection with a single Petition.
`
`The Board notes that all five Petitions have been assigned the same panel of
`three judges for decision. Thus, Patent Owner’s concern that Board efficiency is
`impacted due to the necessity of fifteen administrative patent judges is not
`germane. The Board, however, also notes that although the five separate Petitions
`are styled as involving five separate Petitioners, all five involved parties (Subaru
`Toyota, Ford, Honda, and Nissan) are each listed as either “Petitioners” or “co-
`Petitioners,” and also as real parties in interest in each Petition. See, e.g., Paper 1,
`pp. i, 1 of IPR2014-00280.
`
`During the conference call, the panel conferred and determined that the
`matter of potential joinder warrants additional briefing. Accordingly, the panel
`authorized Patent Owner to file its requested motion to join the five related
`
`
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`Case IPR2014-00280
`Patent 6,324,463
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`proceedings. Counsel for Patent Owner asked that it be given one month to file the
`motion in accordance with Board rules. Evidently, the referenced rule is 37 C.F.R.
`§ 42.122(b), which provides that “[a]ny request for joinder must be filed, as a
`motion under § 41.22, no later than one month after the institution date of any inter
`partes review for which joinder is requested.” However, that one month time
`period applies only to a request for joinder after the institution date of an inter
`partes review. At this stage of the proceeding, the Board has not yet reached a
`decision on whether to institute an inter partes review. By statute, the Board must
`determine whether to institute an inter partes review within three months after the
`filing of a patent owner preliminary response. 35 U.S.C. § 314(b)(1). The Board
`must also be mindful to secure the just, speedy, and inexpensive resolution for
`every inter partes review proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
`Patent Owner filed a preliminary response in this involved inter partes
`
`review proceeding on April 7, 2014 (paper 13), and has also filed preliminary
`responses in the other four related proceedings. A month for filing the pertinent
`motion coupled with a corresponding time period for the filing of an opposition
`may impede the Board’s ability to timely decide whether to institute inter partes
`review in the proceeding. Although during the conference call, the Board initially
`indicated that a time period of one month for Patent Owner to file its motion may
`be appropriate, upon further evaluation, and with the Board’s above-noted
`temporal obligations in mind, Patent Owner is given until April 24, 2014 to file its
`motion to join the five involved inter partes review proceedings. Petitioner is
`given until May 8, 2014 to file any opposition. The Board has decided that reply
`briefing by Patent Owner will not be needed. The parties are reminded that the
`motion and any opposition are each limited to no more than 15 pages as set forth in
`37 C.F.R. § 42.24.
`
`
`
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`Case IPR2014-00280
`Patent 6,324,463
`
`
`3. Order
`
`It is
`
`ORDERED that Patent Owner is authorized to file its requested motion to
`
`join the following inter partes review proceedings:
`
`
`IPR2014-00279
`
`
`IPR2014-00280
`
`
`IPR2014-00281
`
`
`IPR2014-00289
`
`
`IPR2014-00291;
`
`
`
`FURTHER ORDERED that Patent Owner may file its motion no later than 5
`PM Eastern Time on April 24, 2014;
`
`FURTHER ORDERED that Petitioner may file an opposition no later than
`5 PM Eastern Time on May 8, 2014; and
`
`
`FURTHER ORDERED that no reply to the opposition is authorized.
`
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`

`
`Case IPR2014-00280
`Patent 6,324,463
`
`PETITIONER:
`
`William H. Mandir
`John F. Rabena
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`jrabena@sughrue.com
`
`Matthew D. Satchwell
`DLA PIPER LLP
`matthew.satchwell@dlapiper.com
`
`John M. Caracappa
`STEPTOE & JOHNSON LLP
`jcaracap@steptoe.com
`
`Matthew J. Moore
`LATHAM & WATKINS LLP
`matthew.moore@lw.com
`
`Wab Kadaba
`KILPATRICK TOWNSEND & STOCKTON LLP
`wkadaba@kilpatricktownsend.com
`
`
`
`PATENT OWNER:
`
`John R. Kasha
`Kelly L. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
`
`
`
`
`
`6