`Tel: 571-272-7822
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`Paper 15
`Entered: July 2, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`NISSAN NORTH AMERICA, INC., TOYOTA MOTOR NORTH
`AMERICA, INC., SUBARU OF AMERICA, INC., AMERICAN HONDA
`MOTOR CO., INC., FORD MOTOR COMPANY, JAGUAR LAND
`ROVER NORTH AMERICA, LLC, and VOLVO CARS OF NORTH
`AMERICA, LLC,
`Petitioner,
`
`v.
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`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00289
`Patent 6,324,463
`_______________
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`
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122
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`IPR 2014-00289
`Patent 6,324,463
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`On April 10, 2014, following a conference call, we authorized Patent
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`Owner to file a motion to join this proceeding with four other related inter
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`partes review proceedings. See Paper 10. The five related proceedings are
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`IPR2014-00279, IPR2014-00280, IPR2014-00281, IPR2014-00289, and
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`IPR2014-00291 (“the five subject proceedings”). See id. Patent Owner
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`accordingly filed a Motion for Joinder (Paper 11, “Motion” or “Mot.”) on
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`April 24, 2014. Petitioner filed an Opposition to the Motion for Joinder
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`(Paper 12, “Opposition” or “Opp.”) on May 8, 2014.
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`As an initial matter, we note that under our Rules, “[a] motion will not
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`be entered without Board authorization.” 37 C.F.R. § 42.20(b) (2013). Our
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`April 10, 2014 Order authorized Patent Owner only to file a motion to join
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`the five subject proceedings. See Paper 8, 5. While the Motion accordingly
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`requests such a joinder, it also requests “an order requiring Petitioner to
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`identify a single lead counsel authorized to speak on its behalf and a backup
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`counsel designated to speak for Petitioner and lead counsel.” Mot. 1. The
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`Motion further requests, if joinder is opposed by Petitioner or if we deny the
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`Motion, that we deny each Petition in the five subject proceedings for
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`Petitioner’s alleged failure to comply with 37 C.F.R. § § 42.10(a) and
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`alleged violation of what Patent Owner describes as a “one petitioner, one
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`voice rule.” Id. We deny these requests pursuant to Rule 42.20(b) as an
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`unauthorized motion, and turn to the authorized portion of the Motion
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`request joinder of the five subject proceedings.
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`Board’s Authority to Join the Five Subject Proceedings
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`The parties dispute whether we have the authority to join the five
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`subject proceedings into one proceeding before deciding whether to institute
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`2
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`IPR 2014-00289
`Patent 6,324,463
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`a trial in any of the five subject proceedings. Patent Owner contends 37
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`C.F.R. § 42.122 (2013) gives us such authority. See Mot. 14. Petitioner
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`contends 35 U.S.C. § 315(c) explicitly prohibits pre-institution joinder of
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`inter partes review proceedings. See Opp. 14. We need not resolve this
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`dispute because, even if we do have the authority to join multiple inter
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`partes review proceedings prior to instituting any trials, we are not
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`persuaded by the Motion to do so in this case.
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`Whether to Join the Five Subject Proceedings
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`As Patent Owner contends, the five subject proceedings have many
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`similarities. They each concern the same patent, U.S. Patent No. 6,324,463
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`(“the ’463 patent”). See Mot. 2–3 (¶¶ 1–5). The Petitioner in each case is
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`the same group of parties, as identified above in the caption of this decision.
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`See id. Each subject proceeding was filed on either December 20, 2013 or
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`December 23, 2013. See id. There is a significant amount of overlap among
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`the ’463 patent claims being challenged in each of the five subject
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`proceedings, and the five Petitions identify the same constructions for the
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`same four claim terms. See id. at 2–3 (¶¶ 1–7). There is also some overlap
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`in the prior art being cited in the five subject proceedings.1 Substantially the
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`same group of people is identified as lead and back-up counsel among the
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`five subject proceedings, although a different person is identified as lead
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`1 Specifically, alleged Admitted Prior Art is raised in two proceedings (see
`IPR2014-00281, Paper 1, 36–37; IPR2014-00289, Paper 3, 48–60), a Toyota
`Celsior Owner’s Manual is raised in two proceedings (see IPR2014-00280,
`Ex. 1010; IPR2014-00291, Ex. 1009), Nagashima
`is raised
`in
`two
`proceedings (see IPR2014-00281, Ex. 1009; IPR2014-00289, Ex. 1010), and
`Narita is raised in two proceedings (see IPR2014-00281, Ex. 1004;
`IPR2014-00291, Ex. 1006).
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`3
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`IPR 2014-00289
`Patent 6,324,463
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`counsel for Petitioner in each proceeding. See id. at 3–5 (¶¶ 9–13). The
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`Petitions in three of the five subject proceedings (IPR2014-00279, IPR2014-
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`00289, and IPR2014-00291) include a Declaration executed by the same
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`person, David A. McNamara, in support of the Petition. See id. at 3 (¶ 8).
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`The Motion asserts that having to defend against each of the five
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`subject proceedings separately will prejudice Patent Owner, which allegedly
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`would be alleviated by joinder. See Mot. 11–13. Patent Owner contends
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`five separate proceedings “means five of everything at five times the cost —
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`five separate filings, five separate expert declarations, five separate oral
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`hearings . . . , [and] at least five depositions of Petitioner’s declarants . . . .”
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`Mot. 12. Patent Owner also asserts that, with five separate proceedings,
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`Patent Owner will have to coordinate with five separate counsel to schedule
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`depositions. See id. (citing IPR2013-00250, Paper 25, p. 4 (Sept. 3, 2013) as
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`“explaining that ‘joinder of the proceedings will allow for a single
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`deposition, rather than multiple depositions, of the same witnesses’”).
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`Petitioner by contrast contends that maintaining five separate proceedings
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`would not unduly prejudice Patent Owner, because Patent Owner “placed
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`the burden of defending the validity of its patent against multiple parties on
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`itself” by filing separate lawsuits against each of the parties identified as a
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`petitioner in the five subject proceedings. Opp. 9. Petitioner also contends
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`that joinder is not appropriate because of many differences among the five
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`subject proceedings, including different grounds of unpatentability, different
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`prior art, and different declarants. See Opp. 3–6.
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`As the moving party, Patent Owner has the burden of proof to
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`establish that it is entitled to joinder of the five subject proceedings. 37
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`C.F.R. § 42.20(c) (2013). We are not persuaded by the Motion that joining
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`4
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`IPR 2014-00289
`Patent 6,324,463
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`the five subject proceedings would reduce, in any material manner, the
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`burden(s) placed upon Patent Owner in defending the validity of the ’463
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`patent before the Board. Regardless of whether the five subject proceedings
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`are joined or not joined, Patent Owner will still have to defend against the
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`same number of parties (regardless of whether they are identified as one
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`Petitioner or multiple co-Petitioners), and prepare brief(s) addressing the
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`same ground(s) upon which we institute review, if any. Patent Owner
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`presents no credible evidence or argument in support of its statement that
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`five separate proceedings “means five of everything at five times the cost”
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`versus one joined proceeding which would involve the same substantive
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`issues as the five separate proceedings. The alleged discovery burden(s)
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`imposed by five separate proceedings can be alleviated substantially by
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`entering the same schedule in each case, in conjunction with cooperation
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`between the parties and motion practice in the event of disputes — which is
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`no different than what would happen in one joined proceeding. Moreover,
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`we agree with Petitioner that Patent Owner invited a multi-front battle
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`concerning the validity of the ’463 patent when it filed ten separate
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`infringement lawsuits on December 21, 2012, with another five lawsuits
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`following on January 15, 2013. See Opp. 8; Paper 1, 3–4; Paper 5, 2–4.
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`The Motion also contends joinder of the five subject proceedings
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`before institution of any trial(s) in response to the Petitions would benefit the
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`Board. See Mot. 13. Joinder is said to “put[] the Board in a better position
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`to assess inter-petition redundancy of the more than 180 separate alleged
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`grounds of unpatentability and address any inconsistent statements.” Id.
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`Petitioner disagrees. See Opp. 12–14. We are not persuaded that joinder in
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`the present case, whether before or after institution of trial(s), materially
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`IPR 2014-00289
`Patent 6,324,463
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`would benefit the Board. The Board has assigned the same three-Judge
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`panel to each of the five subject proceedings, which substantially addresses
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`Patent Owner’s stated concerns regarding avoidance of redundancy and
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`inconsistency among the five subject proceedings.
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`The Motion finally asserts joinder of the five subject proceedings
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`would not prejudice Petitioner. See Mot. 15. Petitioner disagrees. See
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`Opp. 8–10. Potential prejudice to Petitioner would be a concern if we were
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`inclined to grant the Motion over Petitioner’s objection. Because we are not
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`persuaded that granting the Motion would either alleviate Patent Owner’s
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`burden(s) in the five subject proceedings, or benefit the Board in conducting
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`these proceedings, we need not consider potential prejudice to Petitioner any
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`further.
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`For the foregoing reasons, Patent Owner’s Motion for Joinder is
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`Conclusion
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`DENIED.
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`6
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`IPR 2014-00289
`Patent 6,324,463
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`FOR PETITIONER:
`
`John M. Caracappa
`Tremayne M. Norris
`STEPTOE & JOHNSON LLP
`jcaracap@steptoe.com
`tnorris@steptoe.com
`
`William H. Mandir
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`
`Matthew D. Satchwell
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`
`Wab Kadaba
`KILPATRICK TOWNSEND & STOCKTON LLP
`wkadaba@kilpatricktownsend.com
`
`Matthew J. Moore
`LATHAM & WATKINS LLP
`matthew.moore@lw.com
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`FOR PATENT OWNER:
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`John R. Kasha
`Kelly L. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
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