UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`AMERICAN HONDA MOTOR CO., INC., TOYOTA MOTOR NORTH
`AMERICA, INC., NISSAN NORTH AMERICA INC., FORD MOTOR
`COMPANY, JAGUAR LAND ROVER NORTH AMERICA LLC,
`SUBARU OF AMERICA INC., and VOLVO CARS OF NORTH
`AMERICA LLC
`Petitioners
`
`v.
`
`
`
`
`
`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2014-00289
`Patent 6,324,463
`____________
`
`PATENT OWNER’S MOTION FOR JOINDER OF RELATED INTER
`PARTES REVIEW PROCEEDINGS - IPR2014-00279, IPR2014-00280,
`IPR2014-00281, IPR2014-00289, and IPR2014-00291
`
`
`
`
`
`
`
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`AMERICAN HONDA MOTOR CO., INC., TOYOTA MOTOR NORTH
`AMERICA, INC., NISSAN NORTH AMERICA INC., FORD MOTOR
`COMPANY, JAGUAR LAND ROVER NORTH AMERICA LLC,
`SUBARU OF AMERICA INC., and VOLVO CARS OF NORTH
`AMERICA LLC
`Petitioners
`
`v.
`
`
`
`
`
`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2014-00289
`Patent 6,324,463
`____________
`
`PATENT OWNER’S MOTION FOR JOINDER OF RELATED INTER
`PARTES REVIEW PROCEEDINGS - IPR2014-00279, IPR2014-00280,
`IPR2014-00281, IPR2014-00289, and IPR2014-00291
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I. RELIEF REQUESTED ......................................................................... 1
`
`II. STATEMENT OF MATERIAL FACTS ............................................. 2
`
`
`
`
`
`
`
`
`
`
`
`III. ARGUMENT ...................................................................................... 7
`
`A. Subaru, Toyota, Honda, Ford, Jaguar, Honda, Nissan and Volvo
`Are A Single “Petitioner” ......................................................................... 7
`
`B. Petitioner Has Already Violated The “One Petitioner, One Voice”
`Rule And Admitted It Will Continue To Do So ..................................... 8
`
`C. If The Petitions Are Not Denied, Pre-Institution Joinder Is The
`Most Efficient Way To Proceed ............................................................. 11
`
`D. Pre-Institution Joinder Is Permissible Under The Rules And
`Board Precedent ...................................................................................... 14
`
`E. Joinder Will Not Prejudice Petitioner ............................................ 15
`
`IV. CONCLUSION ................................................................................. 16
`
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 1
`
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Patent
`
`Owner Cruise Control Technologies LLC (“Patent Owner”) files this Motion
`
`for Joinder of Related Inter Partes Review Proceedings (“IPRs”), IPR2014-
`
`00279, IPR2014-00280, IPR2014-00281, IPR2014-00289, and IPR2014-
`
`00291. No fee is required for consideration for this Motion, but if any fee is
`
`due, the Patent Office is authorized to charge Deposit Account 50-4075
`
`(Customer No. 67050) the necessary fee.
`
`I.
`
`RELIEF REQUESTED
`
`By this Motion, Patent Owner requests joinder of related inter partes
`
`review proceedings, IPR2014-00279, IPR2014-00280, IPR2014-00281,
`
`IPR2014-00289, and IPR2014-00291, and an order requiring Petitioner to
`
`identify a single lead counsel authorized to speak on its behalf and a backup
`
`counsel designated to speak for Petitioner and lead counsel. If Petitioner
`
`opposes joinder or the Patent Trial and Appeal Board (“the Board”) denies
`
`this motion, then Patent Owner requests that the Board deny each of the five
`
`petitions filed by Petitioner with respect to U.S. Patent No. 6,324,463 (the
`
`“‘463 Patent”), because Petitioner has failed to comply with § 42.10(a) and
`
`has violated, and admits it will continue to violate, the “one petitioner, one
`
`voice” rule.
`
`
`
`
`
`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 2
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1. On December 20, 2013, Subaru of America, Inc. (“Subaru”),
`
`Toyota Motor North America, Inc. (“Toyota”), American Honda
`
`Motor Co., Inc. (“Honda”), Ford Motor Company (“Ford”), Jaguar
`
`Land Rover North America LLC (“Jaguar”), Volvo Cars of North
`
`America LLC (“Volvo”), and Nissan North America Inc.
`
`(“Nissan”) (collectively “Petitioner”) filed a first petition for inter
`
`partes review challenging claims 1–5, 12–16, 18–21, 23, 25–31,
`
`and 34–36 of U.S. Patent No. 6,324,463 (the “‘463 Patent”).
`
`IPR2014-00279, Paper 1, p. 1.
`
`2. On December 20, 2013, Petitioner filed a second petition for inter
`
`partes review challenging claims 1-5, 12-16, 18, 19, 21, 25-28, and
`
`34-36 of the ‘463 Patent. IPR2014-00280, Paper 1, p. 6.
`
`3. On December 20, 2013, Petitioner filed a third petition for inter
`
`partes review challenging claims 1-5, 12-31, and 34-36 of the ‘463
`
`Patent. IPR2014-00281, Paper 1, p. 1.
`
`4. On December 23, 2013, Petitioner filed a fourth petition for inter
`
`partes review challenging claims 1-5, 12-15, 18-20, 25-28, and 34-
`
`36 of the ‘463 Patent. IPR2014-00289, Paper 1, p. 1.
`
`
`
`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 3
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`5. On December 23, 2013, Petitioner filed a fifth petition for inter
`
`partes review challenging claims 1-5, 12-16, 18-19, 21, 25-31, and
`
`34-36 of the ‘463 Patent. IPR2014-00291, Paper 1, p. 1.
`
`6. All five petitions filed by Petitioner challenge at least claims 1-5,
`
`12-15, 18-19, 25-28 and 34-36 of the ‘463 Patent.
`
`7. All five petitions filed by Petitioner identify the same four claim
`
`terms for construction and propose the same constructions.
`
`IPR2014-00279, Paper 1, pp. 7-9; IPR2014-00280, Paper 1, pp.
`
`11-13; IPR2014-00281, Paper 1, pp. 10-12; IPR2014-00289, Paper
`
`1, pp. 8-10; IPR2014-00291, Paper 1, pp. 12-14.
`
`8. Petitioner has filed declarations of David A. McNamara in support
`
`of its petitions for inter partes review in IPR2014-00279
`
`(IPR2014-00279, Ex. 1007); IPR2014-00289 (IPR2014-00289, Ex.
`
`1012); and IPR2014-00291 (IPR2014-00291, Ex. 1010).
`
`9. Matthew D. Satchwell (Reg. No. 58,870) is identified as Lead
`
`Counsel for Petitioner in IPR2014-00279. IPR2014-00279, Paper
`
`1, p. 3-4. Mr. Satchwell is identified as Backup Counsel for
`
`Petitioner in IPR2014-00280 (IPR2014-00280, Paper 1, p. 2-3);
`
`IPR2014-00281 (IPR2014-00281, Paper 1, p. 2-3); IPR2014-00289
`
`
`
`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 4
`
`
`(IPR2014-00289, Paper 1, p. 3-4); and IPR2014-00291 (IPR2014-
`
`00291, Paper 1, pp. 4-5).
`
`10. William H. Mandir (Reg. No. 32,156) is identified as Lead
`
`Counsel for Petitioner in IPR2014-00280. IPR2014-00280, Paper
`
`1, p. 2-3. Mr. Mandir is identified as Backup Counsel for
`
`Petitioner in IPR2014-00279 (IPR2014-00279, Paper 1, p. 3-4);
`
`IPR2014-00281 (IPR2014-00281, Paper 1, p. 2-3); IPR2014-00289
`
`(IPR2014-00289, Paper 1, p. 3-4); and IPR2014-00291 (IPR2014-
`
`00291, Paper 1, pp. 4-5).
`
`11. Matthew J. Moore (Reg. No. 42,012) is identified as Lead Counsel
`
`for Petitioner in IPR2014-00281. IPR2014-00281, Paper 1, p. 2-3.
`
`Mr. Moore is identified as Backup Counsel for Petitioner in
`
`IPR2014-00279 (IPR2014-00279, Paper 1, p. 3-4); IPR2014-00280
`
`(IPR2014-00280, Paper 1, p. 2-3); IPR2014-00289 (IPR2014-
`
`00289, Paper 1, p. 3-4); and IPR2014-00291 (IPR2014-00291,
`
`Paper 1, pp. 4-5).
`
`12. John M. Caracappa (Reg. No. 43,532) is identified as Lead
`
`Counsel for Petitioner in IPR2014-00289. IPR2014-00289, Paper
`
`1, p. 3-4. Mr. Caracappa is identified as Backup Counsel for
`
`Petitioner in IPR2014-000279 (IPR2014-00279, Paper 1, p. 3-4);
`
`
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 5
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`
`IPR2014-00280 (IPR2014-00280, Paper 1, p. 2-3); IPR2014-00281
`
`(IPR2014-00281, Paper 1, p. 2-3); and IPR2014-00291 (IPR2014-
`
`00291, Paper 1, pp. 4-5).
`
`13. Vaibhav P. Kadaba (Reg. No. 45,865) is identified as Lead
`
`Counsel for Petitioner in IPR2014-00291. IPR2014-00291, Paper
`
`1, pp. 4-5. Mr. Kadaba is identified as Backup Counsel for
`
`Petitioner in IPR2014-00279 (IPR2014-00279, Paper 1, p. 3-4);
`
`IPR2014-00280 (IPR2014-00280, Paper 1, p. 2-3); IPR2014-00281
`
`(IPR2014-00281, Paper 1, p. 2-3); and IPR2014-00289 (IPR2014-
`
`00289, Paper 1, p. 3-4).
`
`14. Subaru has granted only Mr. Satchwell, Paul R. Steadman (Reg.
`
`No. 43,932), Clive M. McClintock (Reg. No. 70,693), and Steven
`
`J. Reynolds (Reg. No. 61,445), all of DLA Piper LLP (US), full
`
`power of attorney to represent it in the five IPRs. IPR2014-00279,
`
`Papers 2 and 7; IPR2014-00280, Papers 3 and 8; IPR2014-00281,
`
`Papers 5 and 8; IPR2014-00289, Paper 4, pp. AHM00767-768;
`
`IPR2014-00291, Paper 2, p. 5.
`
`15. Toyota has granted only Mr. Mandir and practitioners associated
`
`with customer number 23373 (Sughrue Mion, PLLC) full power of
`
`attorney to represent it in the five IPRs. IPR2014-00279, Paper 3;
`
`
`
`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 6
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`
`IPR2014-00280, Paper 2; IPR2014-00281, Paper 9; IPR2014-
`
`00289, Paper 4, p. AHM00769; IPR2014-00291, Paper 2, p. 4.
`
`16. Honda has granted only Mr. Caracappa and practitioners
`
`associated with customer number 27890 (Steptoe & Johnson LLP)
`
`full power of attorney to represent it in the five IPRs. IPR2014-
`
`00279, Paper 4; IPR2014-00280, Paper 5; IPR2014-00281, Paper
`
`6; IPR2014-00289, Paper 4, p. AHM00766; IPR2014-00291, Paper
`
`2, p. 7.
`
`17. Ford has granted only Mr. Moore, Michael B. Eisenberg (Reg. No.
`
`5064), and Clement Naples (Reg. No. 50,663), all of Latham &
`
`Watkins LLP, full power of attorney to represent it in the five
`
`IPRs. IPR2014-00279, Paper 6; IPR2014-00280, Paper 4;
`
`IPR2014-00281, Paper 2; IPR2014-00289, Paper 4, p. AHM00771;
`
`IPR2014-00291, Paper 2, p. 2.
`
`18. Jaguar has granted only Mr. Moore, Michael B. Eisenberg (Reg.
`
`No. 5064), and Clement Naples (Reg. No. 50,663), all of Latham
`
`& Watkins LLP, full power of attorney to represent it in the five
`
`IPRs. IPR2014-00279, Paper 8; IPR2014-00280, Paper 6;
`
`IPR2014-00281, Paper 3; IPR2014-00289, Paper 4, p.AHM00772;
`
`IPR2014-00291, Paper 2, p. 6.
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`
`
`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 7
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`19. Volvo has granted only Mr. Moore, Michael B. Eisenberg (Reg.
`
`No. 5064), and Clement Naples (Reg. No. 50,663), all of Latham
`
`& Watkins LLP, full power of attorney to represent it in the five
`
`IPRs. IPR2014-00279, Paper 10; IPR2014-00280, Paper 9;
`
`IPR2014-00281, Paper 4; IPR2014-00289, Paper 4, p.AHM00773;
`
`IPR2014-00291, Paper 2, p. 3.
`
`20. Nissan has granted only Mr. Kadaba and D. Clay Holloway (Reg.
`
`No. 58,011), both of Kilpatrick Townsend & Stockton LLP, full
`
`power of attorney to represent it in the five IPRs. IPR2014-00279,
`
`Paper 9; IPR2014-00280, Paper 7; IPR2014-00281, Paper 7;
`
`IPR2014-00289, Paper 4, p.AHM00770; IPR2014-00291, Paper 2,
`
`p. 1.
`
`III. ARGUMENT
`
`A. Subaru, Toyota, Honda, Ford, Jaguar, Honda, Nissan and
`Volvo Are A Single “Petitioner”
`
`Despite attempts to brand one company as a “petitioner” and the
`
`others as “co-petitioners,” Subaru, Toyota, Honda, Ford, Jaguar, Honda,
`
`Nissan and Volvo are a single “Petitioner” on each of the five petitions. The
`
`Board has held, “for each ‘petition’ there is but a single party filing the
`
`petition, no matter how many companies are listed as petitioner or
`
`
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 8
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`petitioners and how many companies are identified as real-parties in
`
`interest.” CBM2014-00014, Paper 11, p. 3; see also CMB2014-00013,
`
`Paper 22, p. 9. As a single party, the Petitioner “must speak with a single
`
`voice, both in writing and oral representation.” CBM2014-00014, Paper 11,
`
`p. 3. Thus, each of the five petitions filed with respect to the ‘074 Patent
`
`was filed by the same companies, and hence the same Petitioner (Statement
`
`of Material Facts (“SOMF”), ¶¶1-5), and the Petitioner is required to speak
`
`with a single voice in each proceeding.
`
`B. Petitioner Has Already Violated The “One Petitioner, One
`Voice” Rule And Admitted It Will Continue To Do So
`
`Petitioner has already violated the “one petitioner, one voice” rule by
`
`failing to identify lead counsel and failing to identify backup counsel which
`
`are authorized to conduct business on behalf of the lead counsel. According
`
`to 37 C.F.R. §42.10(a), “[i]f a party is represented by counsel, the party must
`
`designate a lead counsel and a back-up counsel who can conduct business on
`
`behalf of the lead counsel.” Petitioner has failed to comply with this rule for
`
`two reasons.
`
`First, the Petitioner failed to “designate a lead counsel” under §
`
`42.10(a). While the petition identifies an individual as “Lead Counsel,” the
`
`powers of attorney filed with each petition expressly limit the authority of
`
`
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 9
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`the identified “Lead Counsel” to speak on behalf of only a single company.
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`For example, Mr. Satchwell is identified as Lead Counsel for Petitioner in
`
`IPR2014-00279 and Backup Counsel for Petitioner in IPR2014-00280,
`
`IPR2014-00281, IPR2014-00289, and IPR2014-00291. SOMF, ¶9.
`
`However, only Subaru has granted Mr. Satchwell and three colleagues at his
`
`firm a power of attorney for representation in the five IPRs. SOMF, ¶14.
`
`Toyota, Honda, Ford, Jaguar, Nissan and Volvo have not granted a power of
`
`attorney to Mr. Satchwell in IPR2014-00279, and therefore Mr. Satchwell is
`
`not authorized to represent the Petitioner. Similarly, in IPR2014-00279,
`
`Toyota, Honda, Ford and Nissan have granted their respective powers of
`
`attorney to different lawyers at different firms. SOMF, ¶¶15-17 and 20.1
`
`The same is true for all five petitions filed by Petitioner – no Lead Counsel
`
`has been granted powers of attorney from all seven companies to put forth a
`
`single voice for Petitioner.
`
`Second, Petitioner has failed to designate “a back-up counsel who can
`
`conduct business on behalf of the lead counsel” under § 42.10(a). For
`
`example, the petition filed in IPR2014-00279, designates Mr. Satchwell as
`
`Lead Counsel and Mr. Moore, Mr. Mandir, Mr. Kadaba and Mr. Caracappa
`
`
`1 Jaguar and Volvo have granted powers of attorney to the same counsel
`
`
`representing Ford. SOMF, ¶¶18-19.
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
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`Page 10
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`as Backup Counsel. SOMF, ¶10-13.2 However, based on the powers of
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`attorney that have been filed with the petition, neither Mr. Moore, Mr.
`
`Mandir, Mr. Kadaba nor Mr. Caracappa can “conduct business on behalf of”
`
`Mr. Satchwell, because Mr. Satchwell and the three colleagues at his firm
`
`are the only individuals authorized to speak for Subaru in IPR2014-00279.
`
`SOMF, ¶14. The same is true for all five petitions filed by Petitioner – the
`
`designated Backup Counsel is not authorized to conduct business on behalf
`
`of the Lead Counsel.
`
`Therefore, in each of the five proceedings initiated by Petitioner, there
`
`is no single voice authorized to speak on its behalf. Indeed, counsel for each
`
`company admitted that it could not meet this requirement and will likely
`
`continue to violate the “one petitioner, one voice” rule. During a call with
`
`the Board regarding this motion, “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.” IPR2014-00279, Paper 14, p. 3.
`
`
`¶14.
`
`
`2 Steven J. Reynolds, a colleague of Mr. Satchwell, is also designated as
`Backup Counsel, along with the four other attorneys. Like Mr. Satchwell,
`Mr. Reynolds has been granted a power of attorney only by Subaru. SOMF,
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
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`Page 11
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`If each company wanted to have its own voice, it should have filed its own
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`petition.
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`Accordingly, to the extent Petitioner opposes joinder or this motion is
`
`denied, the Board should deny each petition based on Petitioner’s failure to
`
`comply with the rules.
`
`C. If The Petitions Are Not Denied, Pre-Institution Joinder Is
`The Most Efficient Way To Proceed
`
`If the petitions are not denied, a pre-institution joinder is the most
`
`efficient path forward; otherwise, there will be significant prejudice to Patent
`
`Owner. Each petition involves the same Petitioner, the same patent,
`
`eighteen of the same challenged claims, the same terms identified for
`
`construction, the same claim constructions, and the same counsel (whether
`
`lead or backup). SOMF, ¶¶1-7. Also, three of the petitions rely on the same
`
`declarant, David A. McNamara. SOMF, ¶8. The only sensible result given
`
`such extensive substantive overlap is to have a single proceeding on one
`
`schedule with a single oral hearing.
`
`The Board has already taken steps to make review of Petitioner’s five
`
`petitions more efficient by assigning all five petitions to the same panel for
`
`decision. IPR2014-00279, Paper 14, p. 3. While that certainly eliminates
`
`the possibility for inconsistent rulings between petitions, it does not change
`
`
`
`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 12
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`the fact that, absent joinder, the panel will have to preside over, and the
`
`Patent Owner will be required to participate in, five parallel proceedings
`
`directed to the same patent and many of the same challenged claims. This
`
`means five of everything at five times the cost – five separate filings, five
`
`separate expert declarations, five separate oral hearings (because presumably
`
`counsel for each company will want its own hearing), at least five
`
`depositions of Petitioner’s declarants (even though three of the petitions
`
`each rely on declarations from David A. McNamara), etc. For example,
`
`during the Patent Owner’s discovery period (likely the same for all five
`
`proceedings), Patent Owner will have to coordinate with five separate
`
`counsel for depositions of the numerous declarants (some of whom may
`
`have to come from outside the U.S.). Similarly, during the Petitioner’s
`
`discovery period, Patent Owner will have to coordinate with five separate
`
`counsel for depositions of its declarant(s). Certainly, proceeding in such a
`
`manner would significantly prejudice Patent Owner and be contradictory to
`
`the Board’s policy “to secure the just, speedy, and inexpensive resolution of
`
`every proceeding.” 37 C.F.R. § 42.1(b); see also IPR2013-00250, Paper 24,
`
`p. 4 (Sept. 3, 2013) (explaining that “joinder of the proceedings will allow
`
`for a single deposition, rather than multiple depositions, of the same
`
`witnesses.”).
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`
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
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`Page 13
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`Further, pre-institution joinder puts the Board in a better position to
`
`assess inter-petition redundancy of the more than 180 separate alleged
`
`grounds of unpatentability and address any inconsistent statements. All five
`
`petitions by Petitioner challenge at least claims 1-5, 12-15, 18-19, 25-28 and
`
`34-36 of the ‘463 Patent. SOMF, ¶6. For each claim, Petitioner has alleged
`
`multiple grounds of anticipation and obviousness, and relied on statements
`
`by one or more declarants. However, none of the petitions address intra- or
`
`inter-petition redundancies, because Petitioner has taken the improper
`
`position that each petition was filed by a separate company. In fact,
`
`Petitioner failed to comply with 37 C.F.R. § 42.8(b), because its mandatory
`
`notice in each petition fails to identify the other related inter partes review
`
`petitions it concurrently filed. Only upon joining the petitions pre-institution
`
`will the Board be in a position to eliminate inter-petition redundancies and
`
`address inconsistent statements by Petitioner or its declarants. Because the
`
`same panel has already been assigned to each petition, it is logical to
`
`formally join the five proceedings pre-institution to ensure the Board has a
`
`full view of all of Petitioner’s arguments, and if instituted, have a single
`
`proceeding with a single schedule, a single oral hearing and a single final
`
`decision.
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 14
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`D. Pre-Institution Joinder Is Permissible Under The Rules And
`Board Precedent
`
`The Board has stated that the joinder rule, 37 C.F.R. § 42.122(b), only
`
`applies to a request for joinder after institution for an inter partes review.
`
`IPR2014-00279, Paper 14, p. 4. However, the language of the rule sets the
`
`deadline for a joinder motion at “no later than one month after the institution
`
`date of any inter partes review for which joinder is requested.” 37 C.F.R. §
`
`42.122(b). Patent Owner respectfully submits that under this rule a petition
`
`for joinder can be filed any time after a petition is filed up until one month
`
`after institution. The Board has previously invoked 37 C.F.R. § 42.122(a) to
`
`stay a reexamination of a patent after a petition for inter partes review had
`
`been filed but prior to its institution decision. IPR2013-00432, Paper 7, pp.
`
`1-2. Accordingly, the rules and the Board’s precedent authorize joining
`
`proceedings pre-institution.
`
`To the extent the Board deems that § 42.122(b) applies to joinder
`
`motions made after institution, Patent Owner respectfully requests that the
`
`Board consolidate the five petitions pre-institution under § 42.122(a), which
`
`is permissible pre-institution according to the Board’s precedent. IPR2013-
`
`00432, Paper 7, pp. 1-2.
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`
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 15
`
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`E. Joinder Will Not Prejudice Petitioner
`Although each company wants its own voice, Petitioner has put itself
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`in this predicament by filing as a group in contravention of the rules. To the
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`extent the petitions are not denied for failure to comply with the rules,
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`Petitioner will not be prejudiced by pre-institution joinder. The same
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`companies constitute Petitioner in each proceeding, and each company has
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`the same counsel. If pre-institution joinder is ordered, Petitioner should be
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`given an opportunity to identify a single lead counsel authorized to put forth
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`a single voice for Petitioner and a backup counsel authorized to speak on
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`behalf of the lead counsel. The Board could further allow Petitioner to
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`address inter-petition redundancies and any inconsistent statements before
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`the Board determines whether to institute inter partes review.
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`If, however, each company wants to have its own voice, the other
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`companies on each petition may remove themselves from the proceeding by
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`requesting adverse judgments or by settling with Patent Owner and filing
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`joint motions to terminate the proceeding with respect to each company. 37
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`C.F.R. § 42.72; 37 C.F.R. § 42.73(b); see also CMB2014-00013, Paper 22,
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`p. 8.
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
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`Page 16
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`IV. CONCLUSION
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`To the extent the petitions are not denied for failure to comply with
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`the rules, Patent Owner respectfully requests pre-institution joinder of the
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`five related inter partes review proceedings, IPR2014-00279, IPR2014-
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`00280, IPR2014-00281, IPR2014-00289, and IPR2014-00291, initiated by
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`Petitioner.
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`Respectfully submitted,
`
`By: /John R. Kasha/
`John R. Kasha
`Registration No. 53,100
`
`
`
`
`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Tel. 703-867-1886
`Date: April 24, 2014
`
`
`
`
`
`
`
`
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`
`
`JRK
`
`Customer No. 67050
`
`
`
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`
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`Case No.: IPR2014-00289 Attorney’s Docket No.: CCT0004-IPR
`Patent No: 6,324,463
`
`Page 1
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R § 1.550(f), a copy of Patent Owner’s
`
`Motion for Joinder of Related Inter Partes Review Proceedings - IPR2014-
`
`00279, IPR2014-00280, IPR2014-00281, IPR2014-00289, and IPR2014-
`
`00291, filed by Cruise Control Technologies LLC on April 24, 2014, was
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`duly served via electronic mail upon jcaracappa@steptoe.com (John M.
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`Caracappa) and HondaIPR@steptoe.com – counsel of record for Petitioner
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`American Honda Motor Co., Inc., Toyota Motor North America, Inc.,
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`Nissan North America Inc., Ford Motor Company, Jaguar Land Rover North
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`America LLC, Subaru of America Inc., and Volvo Cars of North America
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`LLC (collectively “Petitioner”).
`
`
`
`Respectfully submitted,
`
`/John R. Kasha/
`Registration No. 53,100
`Attorney for Cruise Control
`Technologies LLC
`
`
`
`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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`
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