UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`American Honda Motor Co., Inc.
`
`Petitioner
`
`
`
`v.
`
`
`
`AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 8,036,788
`
`Issue Date: October 11, 2011
`
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,036,788 PURSUANT TO 37 C.F.R. § 42.107
`
`Case No. IPR2014-00629
`
`
`
`
`
`
`
`
`
`
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`American Honda Motor Co., Inc.
`
`Petitioner
`
`
`
`v.
`
`
`
`AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 8,036,788
`
`Issue Date: October 11, 2011
`
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,036,788 PURSUANT TO 37 C.F.R. § 42.107
`
`Case No. IPR2014-00629
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...................................................................................... 1
`
`II. THE BOARD SHOULD REJECT AT LEAST THOSE
`
`GROUNDS THAT ARE THE SAME OR SUBSTANTIALLY
`
`THE SAME AS GROUNDS PREVIOUSLY PRESENTED TO
`
`THE BOARD .............................................................................................. 3
`
`III. THE BOARD SHOULD NOT STAY THE PROCEEDINGS ................ 5
`
`IV. CONCLUSION ........................................................................................... 6
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00629
`
`Patent Owner American Vehicular Sciences (“Patent Owner or AVS”)
`
`submits the following preliminary response to the Petition filed by American
`
`Honda Motor Co., Inc. (“Honda” or “Petitioner”) requesting inter partes review of
`
`claims 1-7, 13, and 20 of U.S. Pat. No. 8,036,788 (“the ‘788 patent”). This filing is
`
`timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107 because it is filed within
`
`three months of the April 22, 2014 mailing date of the Notice granting the Petition
`
`an April 15, 2014 filing date.
`
`Honda is one of several defendants in district court litigation currently
`
`pending on this same patent. Toyota Motor Corporation, another defendant,
`
`already filed an IPR (IPR2013-00417) on this same patent on July 8, 2013. Honda
`
`waited over nine months—after the Toyota petition was granted and after AVS
`
`responded and set forth its arguments as to the prior art raised by Toyota—to file
`
`its own petition. Honda’s petition raises many of the same or substantially the
`
`same arguments as Toyota’s petition—seeking to have AVS defend the same
`
`claims against the same prior art arguments twice. In fact, at least one of the
`
`grounds raised by Honda in the present petition (anticipation by Fry of claims 1, 3,
`
`4, 6, 7) is identical to a ground raised by Toyota and denied by the Board. Honda
`
`wants a second bite at the apple on grounds that the Board rejected with respect to
`
`Toyota. And, Honda timed its petition so that AVS would have to pay to defend
`
`
`
`1
`
`
`
`
`multiple IPRs staggered in time, even if Toyota’s first-filed IPR ends up mooting
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00629
`
`some or all of Honda’s arguments.
`
`Pursuant to 35 U.S.C. § 315 and § 325, AVS submits that the Board should
`
`exercise its discretion by rejecting (at least) those grounds in Honda’s petition that
`
`raise the same or substantially the same prior art or arguments previously presented
`
`to the Board by Toyota. Moreover, AVS submits that the Board should not stay
`
`these proceedings. A stay of the proceedings pending the outcome of Toyota’s
`
`petition would frustrate the goal of securing a speedy resolution of every IPR
`
`proceeding, and promote the strategic filing of serial IPRs for the purpose of
`
`prolonging the staying of co-pending litigation.
`
`Beyond these requests, AVS waives its right, pursuant to 37 C.F.R §
`
`42.107(b), to present a substantive preliminary response on the merits of whether
`
`Honda has shown a reasonable likelihood of success in invalidating one or more of
`
`the claims of the ‘788 patent. As indicated in the Trial Practice Guide, no adverse
`
`inference should be taken by this election. See Office Patent Trial Practice Guide,
`
`Fed. Reg. Vol. 77, No. 157 (2012) at Section II.C. AVS reserves all rights to
`
`submit a Patent Owner Response and/or Amendment of the Patent pursuant to 37
`
`C.F.R. §§ 42.120 and 42.121, respectively, should the Board institute an inter
`
`partes review. This election should not be deemed a waiver or admission on the
`
`part of the Patent Owner of any material presented in the Petition.
`
`
`
`2
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00629
`
`
`
`II. THE BOARD SHOULD REJECT AT LEAST THOSE GROUNDS
`THAT ARE THE SAME OR SUBSTANTIALLY THE SAME AS
`GROUNDS PREVIOUSLY PRESENTED TO THE BOARD
`
`The Patent Statute provides that “[i]n determining whether to institute or
`
`order [an IPR] proceeding . . . the Director may take into account whether, and
`
`reject the petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the [Board].” 35 U.S.C. § 325(d).
`
`Here, three of Honda’ proposed grounds for rejection are the same or
`
`substantially the same as grounds for rejection that were presented by Toyota in
`
`IPR2013-00417, including one ground that was already denied by the Board.1 In
`
`particular, both Honda and Toyota raised the following identical grounds for
`
`invalidity of at least the following same claims:
`
`Anticipation by Scholl of claims 1-7;
`
`Anticipation by Ishihara of claims 1, 3, 4, 6, 7; and
`
`Anticipation by Fry of claims 1, 3, 4, 6, 7 (denied by the Board in IPR2013-00417
`
`as redundant; review based on Fry only instituted on other claims)
`
`
` AVS notes that the Statute does not apply only to situations where the same or
`
`1
`
`substantially the same prior art or arguments are presented by the same petitioner;
`
`accordingly, presentation of the same or substantially the same arguments by
`
`different Petitioners also falls within the Statute. See 35 U.S.C. § 325(d).
`
`
`
`3
`
`
`
`
`In fact, Honda expressly admits in its petition that “[t]he grounds set forth in those
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00629
`
`sections [relating to Scholl, Fry, and Ishihara] are based on the same prior art as
`
`those instituted by the Board in the IPR2013-00417,” and that Honda only included
`
`them in its petition in “an abbreviated fashion.”
`
`Moreover, in Amkor Technology, IPR2013-00242, Paper 37, for example,
`
`the Board rejected proposed grounds for invalidity as redundant over grounds even
`
`though the new grounds contained a different prior art reference. The Board
`
`reasoned that “absent some explanation as to why differences between a set of prior
`
`art references are relevant (e.g., why reference A is a stronger reference with
`
`respect to claim element X than reference B), the fact that references disclose
`
`slightly different things does not demonstrate that asserted grounds are not
`
`cumulative of each other.” Id. at 33.
`
`Accordingly, the Board should deny review of at least the above-listed
`
`grounds proposed by Honda because they are identical or nearly identical to the
`
`grounds proposed by Toyota in IPR2013-00417. Granting review of the same
`
`grounds in this Petition would be wasteful and duplicative, forcing AVS to incur
`
`the expense of responding to the same arguments in two proceedings. The Board
`
`should therefore exercise its discretion under 35 U.S.C. § 325(d) to reject the
`
`above identified grounds. Finally, the Board should reject all grounds to the extent
`
`they are redundant.
`
`
`
`4
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00629
`
`
`
`III. THE BOARD SHOULD NOT STAY THE PROCEEDINGS
`
`The Patent Statute also provides that “during the pendency of an inter partes
`
`review, if another proceeding or matter involving the patent is before the Office,
`
`the Director may determine the manner in which the inter partes review or other
`
`proceeding or matter may proceed, including providing for stay, transfer,
`
`consolidation, or termination of any such matter or proceeding.” 35 U.S.C. § 315.
`
`The Board has also recognized that serial-filed IPR proceedings should not be
`
`allowed to circumvent the Board’s mandate “to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” SAS Inst., Inc. v. ComplementSoft,
`
`LLC, IPR2013-00581, Paper 15 at 22-23 (P.T.A.B. Dec. 30, 2013).
`
`Here, ordering a stay pending the conclusion of the Toyota proceedings
`
`would frustrate the goal of securing a just, speedy, and inexpensive resolution of
`
`the patentability of the ‘788 patent. The Board already instituted review of most of
`
`the same claims, on several of the same proposed grounds, in IPR2013-00417—
`
`and the proceedings can move forward in parallel.
`
`Moreover, allowing the filing of serial IPRs in this case would promote
`
`gamesmanship; Honda could have chosen to join the long-pending Toyota
`
`proceedings long ago, but it chose not to do so.
`
`Finally, allowing a stay in this case would promote the strategic filing of
`
`serial IPRs for the improper purpose of prolonging the stay of co-pending district
`
`
`
`5
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00629
`
`
`court litigation.
`
`IV. CONCLUSION
`
`For at least the foregoing reasons, AVS respectfully requests that the Board
`
`exercise its discretion to refuse to institute an inter partes review for the proposed
`
`grounds and refuse to grant a stay of proceedings.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Scott P. McBride/
`Scott P. McBride
`Registration No. 42,853
`
`
`
`
`
`
`
`
`
`
`
`
`
`DATE: July 22, 2014
`
`
`
`
`
`
`
`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`
`CUSTOMER NUMBER: 23446
`
`
`
`
`
`6
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00629
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the Patent Owner’s Preliminary Response to Petition for
`
`Inter Partes Review of U.S. Patent No. 8,036,788 Pursuant to 37 C.F.R. § 42.107
`
`in connection with Inter Partes Review Case IPR2014-00629 was served on this
`
`22nd day of July by electronic mail to the following:
`
`
`
`Back-up Counsel
`Joseph M. Beauchamp (Reg. No. 46,544)
`(jbeauchamp@jonesday.com)
`H. Albert Liou (Reg. No. 71,504)
`(aliou@jonesday.com)
`JONES DAY
`717 Texas Ave., Suite 3300
`Houston, Texas 77002
`T: (832) 239-3939
`
`
`
`
`
`
`/Scott P. McBride/
`Scott P. McBride
`Registration No. 42,853
`
`
`Lead Counsel
`Joseph Melnik (Reg. No. 48,741)
`(jmelnik@jonesday.com)
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, CA 94303
`T: (650) 739-3939
`
`
`
`
`
`
`MCANDREWS HELD & MALLOY
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`
`
`CUSTOMER NUMBER: 23446
`
`Date: July 22, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
