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`______________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Mercedes-Benz USA, LLC
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`Petitioner
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`v.
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`AMERICAN VEHICULAR SCIENCES LLC
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`Patent Owner
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`Patent No. 6,772,057
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`Issue Date: August 3, 2004
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`Title: VEHICLE MONITORING SYSTEMS USING IMAGE PROCESSING
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`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,772,057 PURSUANT TO 37 C.F.R. § 42.107
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`Case No. IPR2014-00646
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`I.
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`II.
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`TABLE OF CONTENTS
`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`INTRODUCTION ......................................................................................... .. 1
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`THE BOARD SHOULD REJECT AT LEAST THOSE GROUNDS
`THE BOARD SHOULD REJECT AT LEAST THOSE GROUNDS
`PROPOSED BY MERCEDES THAT ARE THE SAME OR
`PROPOSED BY MERCEDES THAT ARE THE SAME OR
`SUBSTANTIALLY THE SAME AS GROUNDS PREVIOUSLY
`SUBSTANTIALLY THE SAME AS GROUNDS PREVIOUSLY
`PRESENTED TO THE BOARD .................................................................... 2
`PRESENTED TO THE BOARD .................................................................. ..2
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`III. CONCLUSION ................................................................................................ 4
`III.
`CONCLUSION .............................................................................................. ..4
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`I.
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`INTRODUCTION
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00646
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`Patent Owner American Vehicular Sciences LLC (“Patent Owner or AVS”)
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`submits the following preliminary response to the Petition filed by Mercedes-Benz
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`USA, LLC (“Mercedes” or “Petitioner”) requesting inter partes review of claims 1,
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`2, 4, 7, 16, 30, 31, 40, 41, 43, 46, 56, 59-62, 77, 78, 81, and 83 of U.S. Pat. No.
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`6,772,057 (“the ‘057 patent”). This filing is timely under 35 U.S.C. § 313 and 37
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`C.F.R. § 42.107 because it is filed within three months of the April 24, 2014
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`mailing date of the Notice granting the Petition an April 16, 2014 filing date.
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`Mercedes is one of several defendants in district court litigation currently
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`pending on this same patent. Toyota Motor Corporation, another defendant,
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`already filed an IPR (IPR2013-00419) on this same patent on July 12, 2013.
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`Mercedes waited over nine months—after the Toyota petition was granted and
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`after AVS responded and set forth its arguments as to the prior art raised by
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`Toyota—to file its own petition. Mercedes’ petition, however, raises many of the
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`same or substantially the same arguments as Toyota’s petition—seeking to have
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`AVS defend the same claims against the same prior art arguments twice. And
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`Mercedes timed its petition so that AVS would have to pay to defend multiple
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`IPRs staggered in time, even if Toyota’s first-filed IPR ends up mooting many of
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`Mercedes’ arguments.
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`Pursuant to 35 U.S.C. §315 and §325, AVS submits that the Board should
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`exercise its discretion by rejecting at least those grounds in Mercedes’ petition that
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00646
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`raise the same or substantially the same prior art or arguments previously presented
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`to the Board by Toyota. Beyond this, AVS waives its right, pursuant to 37 C.F.R §
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`42.107(b), to present a substantive preliminary response on the merits of whether
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`Mercedes has shown a reasonable likelihood of success in invalidating one or more
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`of the claims of the ‘057 patent. As indicated in the Trial Practice Guide, no
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`adverse inference should be taken by this election. See Office Patent Trial Practice
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`Guide, Fed. Reg. Vol. 77, No. 157 (2012) at Section II.C. AVS reserves all rights
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`to submit a Patent Owner Response and/or Amendment of the Patent pursuant to
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`37 C.F.R. §§ 42.120 and 42.121, respectively, should the Board institute an inter
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`partes review. This election should not be deemed a waiver or admission on the
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`part of the Patent Owner of any material presented in the Petition.
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`II. THE BOARD SHOULD REJECT AT LEAST THOSE GROUNDS
`PROPOSED BY MERCEDES THAT ARE THE SAME OR
`SUBSTANTIALLY THE SAME AS GROUNDS PREVIOUSLY
`PRESENTED TO THE BOARD
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`The Patent Statute provides that “[i]n determining whether to institute or
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`order [an IPR] proceeding . . . the Director may take into account whether, and
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`reject the petition or request because, the same or substantially the same prior art or
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`arguments previously were presented to the [Board].” 35 U.S.C. § 325(d).
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`Here, several of Mercedes’ proposed grounds for rejection are the same or
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`substantially the same as grounds for rejection that were presented by Toyota in
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00646
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`IPR2013-00419.1 In particular, both Mercedes and Toyota raised the following
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`identical grounds for invalidity for the same claims:
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`Anticipation by Lemelson of claims 1, 2, 4, 7, 30, 31, 40, 41, 43, 46, 56, 59-62;
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`Obviousness by Lemelson and Borcherts of claims 30, 31, and 62;
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`Obviousness by Lemelson and Asayama of claims 4 and 59;
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`Further, Mercedes has raised additional grounds that are at least substantially the
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`same as grounds presented in the Toyota IPR. These include:
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`Obviousness by Lemelson and Komoda of claims 30, 31, and 62, which is
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`substantially the same as Toyota’s (and Mercedes’) arguments regarding Lemelson
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`and Borcherts, as both Komoda and Borcherts are alleged to supply the missing
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`limitation of a receiver arranged on a rear-view mirror;
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`Obviousness by Lemelson and Kwai of claims 30, 31, and 62 for the same
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`reason—that Kwai allegedly supplies the missing limitation of a receiver arranged
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` AVS notes that the Statute does not just apply only to situations where the same
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`or substantially the same prior art or arguments are presented by the same
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`petitioner. Presentation of the same or substantially the same arguments by
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`different Petitioners also falls within the Statute. See 35 U.S.C. § 325(d).
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`on a rear-view mirror; and
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00646
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`Anticipation by Yamamura of claims 40, 43 (Toyota had asserted obviousness by
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`Yamamura of certain claims, but did not assert any anticipation arguments with
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`respect to Yamamura because Toyota apparently accepted that Yamamura did not
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`anticipate any claims).
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`Accordingly, the Board should deny review of at least the above-listed
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`grounds proposed by Mercedes because they are identical or nearly identical to the
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`grounds proposed by Toyota. Granting review of the same grounds in this Petition
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`would be wasteful and duplicative, forcing AVS to go the expense of responding to
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`the same arguments in two proceedings. As such, the Board should exercise its
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`discretion under 35 U.S.C. § 325(d) to reject at least the above-identified grounds,
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`as well as all other grounds to the extent they are redundant.
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`III. CONCLUSION
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`For at least the foregoing reasons, AVS respectfully requests that the Board
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`exercise its discretion to refuse to institute an inter partes review for the proposed
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`grounds of rejection on the basis of redundancy.
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`DATE: July 24, 2014
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`Respectfully submitted,
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00646
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`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
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`CUSTOMER NUMBER: 23446
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00646
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Patent Owner’s Preliminary Response To Petition
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`For Inter Partes Review Of U.S. Patent No. 6,772,057 Pursuant To 37 C.F.R. §
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`42.107 in connection with Inter Partes Review Case IPR2014-00646 was served
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`on this 24th day of July by electronic mail to the following:
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`Lead Counsel
`Scott W. Doyle (Reg. No. 39176)
`scott.doyle@shearman.com
`Shearman & Sterling LLP
`801 Pennsylvania Ave., NW
`Ste. 900
`Washington, DC 20004
`T: (202) 508-8000
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`Back-up Counsel
`Jonathan R. DeFosse (admitted pro hac vice)
`jonathan.defosse@shearman.com
`Shearman & Sterling LLP
`801 Pennsylvania Ave., NW
`Ste. 900
`Washington, DC 20004
`T: (202) 508-8000
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`MCANDREWS HELD & MALLOY
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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`CUSTOMER NUMBER: 23446
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`Date: July 24, 2014
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