UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`Mercedes-Benz USA, LLC
`
`Petitioner
`
`
`
`v.
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`
`
`AMERICAN VEHICULAR SCIENCES LLC
`
`Patent Owner
`
`
`
`Patent No. 5,845,000
`
`Issue Date: December 1, 1998
`
`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 5,845,000 PURSUANT TO 37 C.F.R. § 42.107
`
`Case No. IPR2014-00647
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`
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`
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Mercedes-Benz USA, LLC
`
`Petitioner
`
`
`
`v.
`
`
`
`AMERICAN VEHICULAR SCIENCES LLC
`
`Patent Owner
`
`
`
`Patent No. 5,845,000
`
`Issue Date: December 1, 1998
`
`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 5,845,000 PURSUANT TO 37 C.F.R. § 42.107
`
`Case No. IPR2014-00647
`
`
`
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`
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`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`THE BOARD SHOULD REJECT GROUNDS PROPOSED BY
`MERCEDES WHICH ARE THE SAME OR SUBSTANTIALLY
`THE SAME AS GROUNDS PREVIOUSLY PRESENTED TO THE
`BOARD ........................................................................................................... 2
`
`III. CONCLUSION ................................................................................................ 4
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`
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`i
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`I.
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`INTRODUCTION
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00647
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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
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`10, 11, 15, 16, 17, 19, 20, and 23 of U.S. Pat. No. 5,845,000 (“the ‘000 patent”).
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`This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107 because it is
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`filed within three months of the April 24, 2014 mailing date of the Notice granting
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`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 (IPR2013-00424) 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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`1
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`exercise its discretion by rejecting those grounds in Mercedes’ petition that raise
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00647
`
`the same or substantially the same prior art or arguments previously presented to
`
`the Board by Toyota. Beyond this request, AVS waives its right, pursuant to 37
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`C.F.R § 42.107(b), to present a substantive preliminary response on the merits of
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`whether Mercedes has shown a reasonable likelihood of success in invalidating one
`
`or more of the claims of the ‘057 patent. As indicated in the Trial Practice Guide,
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`no adverse inference should be taken by this election. See Office Patent Trial
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`Practice Guide, Fed. Reg. Vol. 77, No. 157 (2012) at Section II.C. AVS reserves
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`all rights to submit a Patent Owner Response and/or Amendment of the Patent
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`pursuant to 37 C.F.R. §§ 42.120 and 42.121, respectively, should the Board
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`institute an inter partes review. This election should not be deemed a waiver or
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`admission on the 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
`
`The Patent Statute provides that “[i]n determining whether to institute or
`
`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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`
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` 2
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`Here, several of Mercedes’ proposed grounds for rejection are the same or
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00647
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`substantially the same as grounds for rejection that were presented by Toyota in
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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 10, 11, 19, and 23;
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`Obviousness by Lemelson and Asayama of claims 10, 11, 19, and 23; and
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`Obviousness by Lemelson and Yangawa of claims 16, 17, and 20.
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`
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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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`
` AVS notes that the Statute does not just apply only to situations where the same
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`1
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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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` 3
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`III. CONCLUSION
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00647
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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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`Respectfully submitted,
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`
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`DATE: July 24, 2014
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`
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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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` 4
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2014-00647
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`CERTIFICATE OF SERVICE
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`I hereby certify that the Patent Owner’s Preliminary Response To Petition
`
`For Inter Partes Review Of U.S. Patent No. 5,845,000 Pursuant To 37 C.F.R. §
`
`42.107 in connection with Inter Partes Review Case IPR2014-00647 was served
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`on this 24th day of July by electronic mail to the following:
`
`
`
`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
`
`
`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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`
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`
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`
`
`
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
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`
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`MCANDREWS HELD & MALLOY
`
`
`
`
`
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`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`
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`CUSTOMER NUMBER: 23446
`
`Date: July 24, 2014
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` 5
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