`
`
`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
`
`_____________
`
`
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
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`
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................................................... 1
`
`PRECISE RELIEF REQUESTED ........................................................................................... 2
`
`III.
`
`STATEMENT OF MATERIAL FACTS ................................................................................ 2
`
`IV.
`
`ARGUMENT ............................................................................................................................ 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`CCT’s Request that the IPR Petitions Be Denied is Improper ................................6
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`CCT’s Request for Joinder is Impermissible by Statute ..........................................7
`
`CCT Has Not Met Its Burden in Establishing Entitlement to the
`Requested Joinder ....................................................................................................8
`
`Petitioner Would Be Prejudiced by Joinder or Consolidation .................................9
`
`Joinder or Consolidation Would Ultimately Increase the Board’s
`Burden ....................................................................................................................11
`
`F.
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`Joinder or Consolidation Would Be Impractical ...................................................12
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`V.
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`CONCLUSION....................................................................................................................... 15
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`
`
`ii
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`I.
`
`INTRODUCTION
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`Petitioner Toyota Motor North America, Inc. (“Toyota”) and co-Petitioners
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`Subaru of America, Inc. (“Subaru”), American Honda Motor Co., Inc. (“Honda”),
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`Ford Motor Company (“Ford”), Jaguar Land Rover North America LLC
`
`(“Jaguar”), Volvo Cars of North America LLC (“Volvo”), and Nissan North
`
`America Inc. (“Nissan”) respectfully request that the Board deny Patent Owner
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`Cruise Control Technologies LLC’s (“CCT”) motion requesting joinder of inter
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`partes review proceeding IPR2014-00280 with separate inter partes review
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`proceedings IPR2014-00279 (filed by Petitioners Subaru et al.), IPR2014-00281
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`(filed by Petitioners Ford et al.), IPR2014-00289 (filed by Petitioners Honda et al.),
`
`and IPR2014-00291 (filed by Petitioners Nissan et al.).
`
`
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`The Board should deny CCT’s motion because joinder at this time is
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`impermissible by statute, would prejudice Petitioner Toyota, and would deny the
`
`Board “the focus and clarity afforded by [multiple] smaller proceedings with
`
`different prior art issues.” Liberty Mutual Insurance Co. v. Progressive Casualty
`
`Insurance Co., CBM2012-00002, Paper 16 (February 22, 2013) at 2. Additionally,
`
`CCT has not met its burden in requesting joinder.
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`II.
`
`PRECISE RELIEF REQUESTED
`
`
`
`Petitioner and co-Petitioners request that the Board deny CCT’s motion for
`
`joinder of inter partes review proceedings IPR2014-00279, IPR2014-00280,
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`IPR2014-00281, IPR2014-00289, and IPR2014-00291.
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`III. STATEMENT OF MATERIAL FACTS
`
`1.
`
`On December 21, 2012, CCT filed separate complaints in the United
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`States District Court for the District of Delaware respectively against Ford, Jaguar,
`
`Subaru, and Volvo alleging infringement of U.S. Patent No. 6,324,463 (the “’463
`
`Patent). Additionally, on January 15, 2013, CCT filed separate complaints in the
`
`United States District Court for the District of Delaware respectively against
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`Honda, Nissan, and Toyota alleging infringement of the ‘463 Patent.
`
`2.
`
`On December 20, 2013, Petitioner Subaru and co-Petitioners Toyota,
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`Honda, Ford, Jaguar, Volvo, and Nissan filed a first inter partes review petition
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`(IPR2014-00279) requesting review of claims 1-5, 12-16, 18-21, 23, 25-31, and
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`34-36 of the ’463 Patent based on references Mizuno and Miura. Subaru of
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`America, Inc., et al. v. Cruise Control Technologies LLC, IPR2014-00279, Paper 1
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`(December 20, 2013) at 6. Petitioner Subaru also submitted a supporting expert
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`declaration by David A. McNamara. IPR2014-00279, Exhibit 1007 (December 20,
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`2
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`2013). Matthew D. Satchwell is the only Lead Counsel identified in the petition
`
`for IPR2014-00279. IPR2014-00279, Paper 1 at 3.
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`3.
`
`On December 20, 2013, Petitioner Toyota and co-Petitioners Subaru,
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`Honda, Ford, Jaguar, Volvo, and Nissan filed a second inter partes review petition
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`(IPR2014-00280) requesting review of claims 1-5, 12-16, 18, 19, 21, 25-28, and
`
`34-36 of the ’463 Patent based, inter alia, on primary references Diamante
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`Owner’s Manual, Watanabe, and Celsior. Toyota Motor North America, Inc., et
`
`al. v. Cruise Control Technologies LLC, IPR2014-00280, Paper 1 (December 20,
`
`2013) at 6-7. Petitioner Toyota also submitted a supporting expert declaration by
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`Paul Green. IPR2014-00280, Exhibit 1011 (December 20, 2013). William H.
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`Mandir is the only Lead Counsel identified in the petition for IPR2014-00280.
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`IPR2014-00280, Paper 1 at 2-3.
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`4.
`
`On December 20, 2013, Petitioner Ford and co-Petitioners Subaru,
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`Toyota, Honda, Jaguar, Volvo, and Nissan filed a third inter partes review petition
`
`(IPR2014-00281) requesting review of claims 1-5, 12-31, and 34-36 of the ’463
`
`Patent based, inter alia, on primary references Narita, NHTSA Report, and
`
`Nagashima. Ford Motor Co., et al. v. Cruise Control Technologies LLC,
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`IPR2014-00281, Paper 1 (December 20, 2013) at 5-6. Petitioner Ford also
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`3
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`submitted a supporting expert declaration by Daniel A. Crawford. IPR2014-
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`00281, Exhibit 1011 (December 20, 2013). Matthew J. Moore is the only Lead
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`Counsel identified in petition for IPR2014-00281. IPR2014-00281, Paper 1 at 2-3.
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`5.
`
`On December 23, 2013, Petitioner Honda and co-Petitioners Subaru,
`
`Toyota, Ford, Jaguar, Volvo, and Nissan filed a fourth inter partes review petition
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`(IPR2014-00289) requesting review of claims 1-5, 12-15, 18-20, 25-28, and 34-36
`
`of the ’463 Patent based, inter alia, on primary references Yoshimitsu and
`
`Yagihashi. American Honda Motor Co., Inc., et al. v. Cruise Control Technologies
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`LLC, IPR2014-00289, Paper 3 (December 23, 2013) at 15-60. Petitioner Honda
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`also submitted a supporting expert declaration by David A. McNamara. IPR2014-
`
`00289, Exhibit 1012 (December 23, 2013). John M. Caracappa is the only Lead
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`Counsel identified in thepetition for IPR2014-00289. IPR2014-00289, Paper 3 at
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`3-4.
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`6.
`
`On December 23, 2013, Petitioner Nissan and co-Petitioners Subaru,
`
`Toyota, Ford, Jaguar, Volvo, and Honda filed a fifth inter partes review petition
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`(IPR2014-00291) requesting review of claims 1-5, 12-16, 18, 19, 21, 25-31, and
`
`34-36 of the ’463 Patent based, inter alia, on primary reference Prometheus.
`
`Nissan North America, Inc., et al. v. Cruise Control Technologies LLC, IPR2014-
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`4
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`00291, Paper 1 (December 23, 2013) at 7. Petitioner Nissan also submitted a
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`supporting expert declaration by David A. McNamara. IPR2014-00291, Exhibit
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`1010 (December 23, 2013). Vaibhav P. Kadaba is the only Lead Counsel
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`identified in the petition for IPR20014-00291. IPR2014-00291, Paper 1 at 4-5.
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`7.
`
`On April 9, 2014, a conference call was held between Judges Cocks,
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`Jung, and Hoskins and counsel for the respective parties. Counsel for CCT had
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`requested this call for the specific purpose of seeking authorization to file a motion
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`to join the five inter partes review proceedings. During the call, the panel of
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`judges noted that all five petitions have been assigned to the same panel of three
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`judges. Furthermore, during the call, the panel authorized CCT “to file its
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`requested motion to join the five related proceedings.” IPR2014-00280, Paper 14
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`(April 10, 2014) at 3-4.
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`8.
`
`On April 24, 2014, CCT filed a motion requesting joinder of the five
`
`inter partes review proceedings, pursuant to 35 U.S. Code § 315(c). IPR2014-
`
`00280, Paper 15 (April 24, 2014) at 1.
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`IV. ARGUMENT
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`The Board should not grant CCT’s motion because it is unauthorized, it is
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`statutorily prohibited under 35 U.S. Code § 315(c), Petitioner would be prejudiced
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`5
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`if the proceedings are joined, joinder would ultimately increase the burden on the
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`Board, CCT would not be prejudiced by denial of joinder, and joining the
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`proceedings would be impractical.
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`A. CCT’s Request that the IPR Petitions Be Denied is Improper
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`In its joinder motion, CCT argues that all of the related petitions should be
`
`denied for allegedly violating the “One Petitioner, One Voice” rule. Id. at 8-11.
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`As an initial point, it must be recognized that CCT was not given leave to file a
`
`motion requesting denial or dismissal of the petitions at this time, let alone for
`
`violating the “One Petitioner, One Voice” rule. Rather, the Board has only
`
`authorized CCT to file a motion requesting joinder. SOMF at para. 7; See also
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`IPR2014-00280, Paper 14 at 3-4. For this reason alone, CCT’s unauthorized
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`request should be disregarded. 37 C.F.R. § 42.20(b).
`
`Notwithstanding, contrary to the allegations set forth by CCT in its motion,
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`Petitioner and co-Petitioners are not violating the “One Petitioner, One Voice”
`
`rule. Rather, each petition (including that for the instant proceeding) designates a
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`single lead counsel. SOMF at paras. 2-6.
`
`In its motion, CCT cites the Board’s decisions in Agilysys, Inc., et al. v.
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`Ameranth, Inc., CBM2014-00014, Paper 11 (February 11, 2014) and Fandango,
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`6
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
`
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`LLC, et al. v. Ameranth, Inc., CBM2014-00013, Paper 22 (March 24, 2014), which
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`held that the petitioners there violated the “One Petitioner, One Voice” rule.
`
`However, in both of those proceedings, the petitioners were in blatant violation of
`
`this rule expressly because each of plural petitioners designated its own lead
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`counsel to potentially forward different positions, resulting in a single petition with
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`multiple lead counsels. Agilysys, Inc., et al. v. Ameranth, Inc., CBM2014-00014,
`
`Paper 11 (February 11, 2014) at 2; and Fandango, LLC, et al. v. Ameranth, Inc.,
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`CBM2014-00013, Paper 22 (March 24, 2014) at 2. This is clearly distinguishable
`
`from the five petitions in question here, where each petition designates a single
`
`lead counsel.
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`As such, CCT’s request should be denied since, for each petition, Petitioner
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`and co-Petitioners have designated a single lead counsel to speak with a uniform
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`voice for that petition.
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`B. CCT’s Request for Joinder is Impermissible by Statute
`
`CCT has filed its motion requesting joinder of the five inter partes review
`
`proceedings “[p]ursuant to 35 U.S.C § 315(c).” IPR2014-00280, Paper 15 at 1.
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`However, 35 U.S.C § 315(c) provides (emphasis added):
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`7
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`(c) Joinder.— If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as
`a party to that inter partes review any person who
`properly files a petition under section 311 that the
`Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter
`partes review under section 314.
`
`Thus, the statute explicitly prohibits pre-institution joinder of inter partes
`
`reviews. There can be no dispute about this fact, as the Board has confirmed the
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`same in denying a joinder request on the grounds that “35 U.S. Code § 315(c) only
`
`permits joinder to a previously instituted case.” Fifth Third Bank v. Leon
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`Stambler, IPR2014-00244, Paper 4 (December 17, 2013) at 5.
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`As such, CCT’s motion requesting joinder is impermissible by statute and
`
`should, therefore, be disregarded in its entirety.
`
`C. CCT Has Not Met Its Burden in Establishing Entitlement to the
`Requested Joinder
`
`As the moving party, CCT “has the burden of proof in establishing
`
`entitlement to the requested relief.” NetApp, Inc. v. PersonalWeb Technologies,
`
`LLC, IPR2013-00319, Paper 18 (July 22, 2013) at 4. In this regard, the Board has
`
`established that “[a] motion for joinder should: (1) set forth the reasons why
`
`joinder is appropriate; (2) identify any new grounds of unpatentability asserted in
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`8
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
`
`
`the petition; (3) explain what impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) specifically address how briefing and
`
`discovery may be simplified.” Id.
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`As CCT has not addressed any of these four requirements, CCT has
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`unequivocally failed to meet its burden in requesting joinder and, therefore, its
`
`motion should be denied.
`
`At most, CCT argues that it would be prejudiced if joinder is denied due to
`
`the cost of five inter partes proceedings. IPR2014-00280, Paper 15 at 12.
`
`However, CCT filed separate lawsuits against each of the above-listed Petitioner
`
`and co-Petitioners and therefore placed the burden of defending the validity of its
`
`patent against multiple parties on itself. SOMF at para. 1. Certainly, it is not the
`
`task of the Board and Petitioner to minimize this burden brought on by CCT’s own
`
`litigious behavior.
`
`D. Petitioner Would Be Prejudiced by Joinder or Consolidation
`
`As a matter of right, each of the above listed Petitioner and co-Petitioners is
`
`entitled to file a separate petition requesting inter partes review within one year of
`
`being served with a complaint alleging infringement. See 35 U.S.C. § 311 and 35
`
`U.S.C. § 315(b). Although the five different petitions filed by the respective
`
`9
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`
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
`
`
`parties list the same overall combination of petitioners, the primary Petitioner for
`
`each proceeding is different, and the co-Petitioners are included for the purpose of
`
`preserving the pendency of each proceeding in case one party settles with CCT.
`
`Similarly, the lead counsel for each petition differs, in accordance with the primary
`
`Petitioner for each proceeding.
`
`Joinder or consolidation at this time would force Petitioners to choose one
`
`lead counsel for all of the proceedings, and would diminish the ability of each
`
`Petitioner (other than the one Petitioner corresponding to the sole lead counsel) to
`
`control its respective petition. For example, the petition for the instant proceeding
`
`(IPR2013-00280) was filed by primary Petitioner Toyota to raise grounds based on
`
`Toyota’s own prior art (i.e., Toyota’s Celsior manual). Given that this prior art is
`
`practiced, to this day, by Toyota, this art is clearly most relevant to Toyota and
`
`therefore included in the petition prepared primarily by Toyota’s counsel and
`
`designating Toyota’s counsel as lead counsel. Consolidating at this time would
`
`thus prejudice Petitioner Toyota, and potentially deny it the ability to exercise
`
`substantial control over the arguments with respect to the prior art that it practices.
`
`10
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
`
`
`E. Joinder or Consolidation Would Ultimately Increase the Board’s
`Burden
`
`As stated above, although the five different petitions list the same overall
`
`combination of petitioners, the primary Petitioner for each proceeding is different,
`
`and the co-Petitioners are included for the purpose of preserving the pendency of
`
`each proceeding in case one party settles with CCT. Absent such inclusion of co-
`
`Petitioners, there is no guarantee that the prior art issues presented in a single inter
`
`partes review petition filed by a sole Petitioner would be preserved if that
`
`Petitioner were to settle with CCT. (See, e.g., IPR2014-00244, Paper 4 at 5, where
`
`joinder request denied after petitioners in earlier-filed petition settled with patent
`
`owner thereby terminating the earlier proceeding).
`
`As an alternative to the approach taken here, each Petitioner could have
`
`separately filed five petitions (for a total of 25 petitions) in order to ensure that all
`
`of the various prior art issues are considered irrespective of settlement by another
`
`Petitioner. However, such a scenario would have resulted in a much larger number
`
`of petitions with substantial overlap in prior art issues (e.g., the Celsior manual
`
`would have potentially been cited in five different petitions), thereby creating
`
`undue burden on both the Board and CCT. To reduce such burden on the Board,
`
`11
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
`
`
`all of the instant primary Petitioners coordinated their respective petitions to avoid
`
`redundancy and present different prior art issues in each.
`
`Joining or consolidating the proceedings at this time would effectively
`
`penalize the Petitioners for their good faith effort to challenge the validity of the
`
`‘463 Patent in an efficient manner with minimal burden on the Board.
`
`In that same vein, joining or consolidating the proceedings at this time
`
`would discourage multiple accused infringers in future proceedings from
`
`collaborating, and would instead encourage the filing of large numbers of separate
`
`petitions with overlapping prior art and divergent positions (e.g., claim
`
`construction) by each party thereby increasing the Board’s burden and
`
`contradicting the Board’s policy “to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” 37 C.F.R. § 42.1(b).
`
`F. Joinder or Consolidation Would Be Impractical
`
`In the five related petitions at issue here, the petitioning parties have worked
`
`together to present different prior art issues in each proceeding, while avoiding
`
`redundancy. SOMF at paras. 2-6. Furthermore, across the five petitions, three
`
`different experts have submitted declarations. As such, joinder or consolidation is
`
`neither necessary, nor practical, here.
`
`12
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`
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
`
`
`In a similar scenario previously before the Board, i.e., where a petitioner
`
`filed multiple petitions with different primary prior art references in each, the
`
`Board has denied joinder. See CBM2012-00002, Paper 16 at 2; See also Liberty
`
`Mutual Insurance Co. v. Progressive Casualty Insurance Co, CBM2012-00004,
`
`Paper 15 (February 22, 2013) at 2.
`
`Specifically, among the past decisions regarding joinder of America Invents
`
`Act (AIA) post-grant proceedings, most of which relate to a Petitioner attempting
`
`to circumvent the one-year statutory bar for filing a petition, the circumstances in
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`CBM2012-00002 and CBM2012-00004 are the most closely related to those here.
`
`Namely, as in the instant case, multiple petitions were simultaneously filed
`
`requesting review of overlapping sets of claims of the same patent. See
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`CBM2012-00002, Paper 1 (September 16, 2012) at 23; See also CBM2012-00004,
`
`Paper 1 (September 16, 2012) at 22. Also, as in the instant case, each petition
`
`relied on different primary references in the proposed grounds of rejection. See id.
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`However, in CBM2012-00002 and CBM2012-00004, the Board denied the parties’
`
`request for joinder in favor of “the focus and clarity afforded by [multiple] smaller
`
`proceedings with different prior art issues.” CBM2012-00002, Paper 16 at 2; and
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`13
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
`
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`CBM2012-00004, Paper 15 at 2. CCT has provided no reason as to why the
`
`instant case is distinguishable from this precedent.
`
`In fact, separate smaller proceedings are even more warranted in the instant
`
`case as compared to CBM2012-00002 and CBM2012-00004, since the five
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`different proceedings here involve more than just “different prior art issues” that
`
`would make consolidation impractical. For example, the five different proceedings
`
`here involve different sets of challenged claims, different expert declarants,
`
`different primary petitioners, and different lead counsels, all of which would be
`
`difficult and impractical, if not impossible, to reconcile if joined into one
`
`proceeding. For this reason, the Board has held that these factors weigh against
`
`joinder. See, e.g., Ariosa Diagnostics v. Isis Innovation Limited, IPR2103-00250,
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`Paper 24 (PTAB, Sept. 3, 2013) at 2-3.
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`14
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`V. CONCLUSION
`
`
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`
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`For at least these reasons, the Board should deny CCT’s motion for joinder.
`
`
`
`Respectfully submitted,
`
` /William H. Mandir /
`
`William H. Mandir
`Registration No. 32,156
`
`Sughrue Mion, PLLC
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`
`WASHINGTON OFFICE
`
`23373
`CUSTOMER NUMBER
`
`Date: May 8, 2014
`
`
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`15
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the attached Opposition to CCT’s
`
`Motion for Joinder was sent via e-mail on May 8, 2014, to the following:
`
`John R. Kasha, Reg. No. 53,100
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886
`john.kasha@kashalaw.com
`
`Counsel of Record for U.S. Patent No.
`6,324,463
`
`
`Date: May 8, 2014
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`
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`
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`Respectfully submitted,
`
`
` /William H. Mandir /
`William H. Mandir
`Registration No. 32,156
`
`
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`
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