UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`FORD MOTOR COMPANY, JAGUAR LAND ROVER NORTH
`AMERICA, LLC, VOLVO CARS OF NORTH AMERICA, LLC,
`TOYOTA MOTOR NORTH AMERICA, INC., AMERICAN HONDA
`MOTOR CO., INC., NISSAN NORTH AMERICA, INC., and SUBARU
`OF AMERICA, INC.
`Petitioner
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`v.
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`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2014-00281
`Patent 6,324,463
`____________
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`PATENT OWNER’S MOTION FOR REHEARING
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`FORD MOTOR COMPANY, JAGUAR LAND ROVER NORTH
`AMERICA, LLC, VOLVO CARS OF NORTH AMERICA, LLC,
`TOYOTA MOTOR NORTH AMERICA, INC., AMERICAN HONDA
`MOTOR CO., INC., NISSAN NORTH AMERICA, INC., and SUBARU
`OF AMERICA, INC.
`Petitioner
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2014-00281
`Patent 6,324,463
`____________
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`PATENT OWNER’S MOTION FOR REHEARING
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`TABLE OF CONTENTS
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`I. RELIEF REQUESTED .............................................................................. 1
`II. STATEMENT OF MATERIAL FACTS ................................................ 2
`III. ARGUMENT ............................................................................................. 4
`A. Subaru, Toyota, Honda, Ford, Jaguar, Nissan and Volvo Are A
`Single “Petitioner” ........................................................................................... 4
`B. The Petition Was Defective For Failure To Identify Counsel
`Under 37 C.F.R. § 42.8 .................................................................................... 4
`C. Institution Based On A Defective Petition Was An Abuse Of
`Discretion ........................................................................................................... 6
`IV. CONCLUSION ......................................................................................... 7
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`Case No.: IPR2014-00281 Attorney’s Docket No.: CCT0003-IPR
`Patent No: 6,324,463
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`Page 1
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`Pursuant to 37 C.F.R. § 42.71(d), Patent Owner Cruise Control
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`Technologies LLC (“Patent Owner”) files this Motion for Rehearing of the
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`Board’s Decision to Institute Inter Partes Review. Paper 17 (Jul. 2, 2014).
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`In particular, Patent Owner requests reconsideration of the Board’s
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`Institution Decision, because the Petition is defective for failing to identify
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`counsel as required by 37 C.F.R. § 42.8 and the defect was never corrected.
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`Institution of inter partes review, despite Petitioner’s failure to comply with
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`the rules, was an abuse of discretion.
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`No fee is required for consideration of this Motion, but if any fee is
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`due, the Patent Office is authorized to charge Deposit Account 50-4075
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`(Customer No. 67050) the necessary fee.
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`I.
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`RELIEF REQUESTED
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`By this Motion, Patent Owner requests reconsideration of the Board’s
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`Institution Decision. Because the Petition was defective for failure to
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`identify counsel under 37 C.F.R. § 42.8 and the defect was never corrected,
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`the Board’s institution of inter partes review was an abuse of discretion.
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`Accordingly, Patent Owner requests that the Board grant this motion and
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`deny the Petition in toto.
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`1
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`Case No.: IPR2014-00281 Attorney’s Docket No.: CCT0003-IPR
`Patent No: 6,324,463
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`Page 2
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On December 20, 2013, Subaru of America, Inc. (“Subaru”),
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`Toyota Motor North America, Inc. (“Toyota”), American Honda Motor Co.,
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`Inc. (“Honda”), Ford Motor Company (“Ford”), Jaguar Land Rover North
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`America LLC (“Jaguar”), Volvo Cars of North America LLC (“Volvo”), and
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`Nissan North America Inc. (“Nissan”) (collectively “Petitioner”) filed a
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`petition (“Petition”) for inter partes review challenging claims 1–5, 12–31
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`and 34-36 of U.S. Patent No. 6,324,463 (the “‘463 Patent”). IPR2014-
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`00281, Paper 1, p. 1.
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`2.
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`In the Petition, Petitioner identified Matthew J. Moore (Reg.
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`No. 42,012) of Latham & Watkins LLP as Lead Counsel and five other
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`attorneys as Backup Counsel: Michael B. Eisenberg (Reg. No. 50,643) of
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`Latham & Watkins LLP; William H. Mandir (Reg. No. 32,156) of Sughrue
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`Mion, PLLC; Matthew D. Satchwell (Reg. No. 58,870) of DLA Piper LLP
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`(US); John M. Caracappa (Reg. No. 43,532) of Steptoe & Johnson LLP; and
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`Wab Kadaba (Reg. No. 45,865) of Kilpatrick Townsend & Stockton LLP.
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`IPR2014-00281, Paper 1, pp. 2-3.
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`3.
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`Only Ford, Jaguar and Volvo have granted Mr. Moore full
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`power of attorney to represent them (individually) in this proceeding.
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`IPR2014-00281, Papers 2, 3, and 4. Mr. Moore does not represent or have
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`2
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`Case No.: IPR2014-00281 Attorney’s Docket No.: CCT0003-IPR
`Patent No: 6,324,463
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`Page 3
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`authority to conduct business on behalf of Subaru, Toyota, Honda or Nissan
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`in this proceeding.
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`4.
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`Only Subaru has granted Mr. Satchwell full power of attorney
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`to represent it in this proceeding. IPR2014-00281, Papers 5 and 8. Mr.
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`Satchwell does not represent or have authority to conduct business on behalf
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`of Toyota, Honda, Ford, Jaguar, Volvo or Nissan in this proceeding.
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`5.
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`Only Toyota has granted Mr. Mandir full power of attorney to
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`represent it in this proceeding. IPR2014-00281, Paper 9. Mr. Mandir does
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`not represent or have authority to conduct business on behalf of Subaru,
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`Honda, Ford, Jaguar, Volvo or Nissan in this proceeding.
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`6.
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`Only Honda has granted Mr. Caracappa full power of attorney
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`to represent it in this proceeding. IPR2014-00281, Paper 6. Mr. Caracappa
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`does not represent or have authority to conduct business on behalf of Subaru,
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`Toyota, Ford, Jaguar, Volvo or Nissan in this proceeding.
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`7.
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`Only Nissan has granted Mr. Kadaba full power of attorney to
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`represent it in this proceeding. IPR2014-00281, Paper 7. Mr. Kadaba does
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`not represent or have authority to conduct business on behalf of Subaru,
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`Toyota, Honda, Ford, Jaguar or Volvo in this proceeding.
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`3
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`Case No.: IPR2014-00281 Attorney’s Docket No.: CCT0003-IPR
`Patent No: 6,324,463
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`Page 4
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`III. ARGUMENT
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`A. Subaru, Toyota, Honda, Ford, Jaguar, Nissan and Volvo
`Are A Single “Petitioner”
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`The instant petition lists seven companies as the petitioner: Subaru,
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`Toyota, Honda, Ford, Jaguar, Nissan and Volvo. Statement of Material
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`Facts (“SOMF”), ¶1. The Board has held, “[i]n circumstances not involving
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`a motion for joinder or consolidation of separate proceedings, for each
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`‘petition’ there is but a single party filing the petition, no matter how many
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`companies are listed as petitioner.” CBM2014-00014, Paper 11, p. 3; see
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`also CMB2014-00013, Paper 22, p. 9. Accordingly, Subaru, Toyota,
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`Honda, Ford, Jaguar, Nissan and Volvo are treated as a single “Petitioner”
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`and must fulfill all the requirements of a “petitioner” set forth in 37 C.F.R. §
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`42.1 et seq. as though they were a single entity.
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`B. The Petition Was Defective For Failure To Identify
`Counsel Under 37 C.F.R. § 42.8
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`In the Petition, Petitioner provided mandatory notices as required by §
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`42.8. IPR2014-00281, Paper 1, pp. 1-5. However, Petitioner’s identification
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`of lead and back-up counsel under § 42.8(b)(3) is defective. Not one of the
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`practitioners identified as lead or back-up counsel represents or has authority
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`to conduct business on behalf of all of the seven companies comprising
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`4
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`Case No.: IPR2014-00281 Attorney’s Docket No.: CCT0003-IPR
`Patent No: 6,324,463
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`Page 5
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`Petitioner. Accordingly, the Petition is defective for failure to identify a lead
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`counsel and a back-up counsel under § 42.8(b)(3).
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`Under § 42.8, if a petitioner is represented by counsel, it is required to
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`identify lead and back-up counsel in the petition. § 42.8(a)(1), (b)(3).
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`Under § 42.10, the petitioner “must designate a lead counsel and a back-up
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`counsel who can conduct business on behalf of the lead counsel,” and “a
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`power of attorney must be filed with the designation of counsel.” §
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`42.10(a), (b) (emphasis added). Thus, in a petition listing more than one
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`company as a petitioner, all such companies must (i) identify at least one
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`lead counsel that can conduct business on all of their behalves, (ii) identify
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`at least one backup counsel that can conduct business on behalf of the lead
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`counsel, and (iii) grant their respective powers of attorney to the same lead
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`and back-up counsel.
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`In the Petition, Petitioner designated Mr. Moore as lead counsel and
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`five other practitioners as backup counsel. SOMF, ¶ 2. With the Petition,
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`each company filed a separate power of attorney. SOMF, ¶¶ 3-7. However,
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`only Ford, Jaguar and Volvo have granted Mr. Moore power of attorney in
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`this proceeding. SOMF, ¶ 3. Thus, Mr. Moore is only counsel for Ford,
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`Jaguar and Volvo and does not represent or have authority to conduct
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`business on behalf of Subaru, Toyota, Honda or Nissan in this proceeding.
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`5
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`Case No.: IPR2014-00281 Attorney’s Docket No.: CCT0003-IPR
`Patent No: 6,324,463
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`Page 6
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`Accordingly, Mr. Moore is not lead counsel for Petitioner, because he is not
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`counsel for six of the seven companies which comprise Petitioner.
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`Similarly, none of the back-up counsel identified in the Petition represents or
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`has authority to conduct business on behalf of all seven companies which
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`comprise Petitioner. SOMF, ¶¶ 3-7.
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`Therefore, the Petition does not meet the requirements set forth in §
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`42.8(b)(3).
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`C. Institution Based On A Defective Petition Was An Abuse
`Of Discretion
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`Under 37 C.F.R. § 42.71(c), a panel reviews a decision to institute
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`trial for an abuse of discretion. It cannot be disputed that the Petition is
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`defective for failing to meet the requirements of § 42.8(b)(3). Further, the
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`defect has never been corrected. Accordingly, it was an abuse of discretion
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`for the Board to institute inter partes review.
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`The PTO has stated that “[i]f any regulatory requirement [e.g.,
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`identification of lead and back-up counsel] is not met, the petition is
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`defective” and “the defect must be corrected within one week.”
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp (Answer to Question D3) (last
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`visited July 9, 2014). Here, the Petition does not meet the regulatory
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`requirement of § 42.8(b)(3), and Petitioner has not made any effort to correct
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`6
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`Case No.: IPR2014-00281 Attorney’s Docket No.: CCT0003-IPR
`Patent No: 6,324,463
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`Page 7
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`the defect. Accordingly, instituting inter partes review based on the
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`defective, uncorrected Petition was an abuse of discretion, and the Petition
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`should be denied.
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`IV. CONCLUSION
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`For the reasons set forth herein, Patent Owner respectfully requests
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`that this motion be granted and the Petition be denied.
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`Respectfully submitted,
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`By: /John R. Kasha/
`John R. Kasha
`Registration No. 53,100
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`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
`Date: July 10, 2014
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`JRK
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`Customer No. 67050
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`7
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`Case No.: IPR2014-00281 Attorney’s Docket No.: CCT0003-IPR
`Patent No: 6,324,463
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`Page 1
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R § 1.550(f), a copy of Patent Owner’s
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`Motion for Rehearing of the Board’s Decision to Institute Inter Partes
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`Review, filed by Cruise Control Technologies LLC on July 10, 2014, was
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`duly served via electronic mail upon cct-ipr.lwteam@lw.com – counsel of
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`record for Petitioner Ford Motor Company, Jaguar Land Rover North
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`America LLC, Volvo Cars of North America LLC, Toyota Motor North
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`America, Inc., American Honda Motor Co., Inc., Nissan North America Inc.,
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`and Subaru of America Inc. (collectively “Petitioner”).
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`Respectfully submitted,
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`/John R. Kasha/
`Registration No. 53,100
`Attorney for Patent Owner
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`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
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