UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`
`Hyundai Motor Company
`Petitioner
`
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`
`
`
`Patent No. 6,738,697
`Filing Date: July 3, 2002
`Issue Date: May 18, 2004
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`_________________
`
`
`
`
`
`Inter Partes Review No. Unassigned
`
`__________________________________________________________________
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`
`Hyundai Motor Company
`Petitioner
`
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`
`
`
`Patent No. 6,738,697
`Filing Date: July 3, 2002
`Issue Date: May 18, 2004
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`_________________
`
`
`
`
`
`Inter Partes Review No. Unassigned
`
`__________________________________________________________________
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`
`Hyundai Motor Company (“Hyundai”) submits at the same time as this
`
`motion a Petition for Inter Partes Review of claims 1, 2, 5, 6, 10, 17-22, 26, 27,
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`32, 40, and 61 of U.S. Patent No. 6,738,697 (“the ’697 patent”) (“Petition”).
`
`Hyundai respectfully requests that its Petition be granted and that the proceedings
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`be joined in accordance with 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37 C.F.R.
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`§ 42.122(b) with the pending inter partes review initiated by Honda Motor Co.
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`(“Honda”) concerning the same patent: American Honda Motor Co. Inc., v.
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`American Vehicular Sciences, LLC, Case No. IPR2014-00634 (the “Honda IPR”).
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`Joinder is appropriate because: (1) it will promote efficient resolution of the
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`validity of the ’697 patent without prejudice to American Vehicular Sciences, LLC
`
`(“AVS”) or Honda; (2) Hyundai’s petition raises only the same grounds of
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`unpatentability as those in Honda’s petition that were instituted for trial; (3) joinder
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`would not affect the pending schedule in the Honda IPR nor increase the
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`complexity of that proceeding, minimizing costs; and (4) Hyundai is willing to
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`agree to consolidated filings with Honda to minimize burden and schedule impact.
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`Absent joinder, Hyundai could be prejudiced if the Honda IPR is terminated before
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`a final written decision is issued, as it would have to litigate the same positions at
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`the District Court under a higher burden of proof. Accordingly, joinder should be
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`granted.
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`- 1 -
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`BACKGROUND AND RELATED PROCEEDINGS
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`American Vehicular Sciences, LLC (“AVS”) is the owner of the ’697 patent.
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`
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`I.
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`On October 15, 2012, AVS sued Hyundai Motor Company, Hyundai Motor
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`America, and Hyundai Motor Manufacturing Alabama, LLC (collectively
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`“Hyundai”) in the Eastern District of Texas for allegedly infringing the ’697 patent
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`(the “Underlying Litigation”). On April 15, 2014, Honda filed a petition for inter
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`partes review of the ’697 patent. The Board instituted trial in the Honda IPR on
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`August 26, 2014 (Honda IPR, Paper No. 8, at 27-28) on claims 1, 2, 5, 6, 10, 17-
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`22, 26, 27, 32, 40, and 61. The Board set October 27, 2014, as the date for AVS’s
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`response to the petition (Honda IPR, Paper No. 9, at 6). Concurrently with this
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`Motion, Hyundai is filing a Petition for inter partes review of the ’697 patent.
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`II. ARGUMENT
`Hyundai’s Petition and this motion for joinder are timely under 35 U.S.C. §
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`315(c) and 37 C.F.R. § 42.122(b), as they are being submitted within one month of
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`August 26, 2014, the date that the Honda IPR was instituted. A party may file a
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`motion requesting joinder “no later than one month after the institution date of any
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`inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The
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`one-year time limitation prescribed by 35 U.S.C. § 315(b) does not apply when a
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`party moves to join another IPR proceedings. See 35 U.S.C. § 315 (b) (“The time
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`limitation set forth in the preceding sentence shall not apply to a request for joinder
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`- 2 -
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`under subsection (c).”); see also Dell Inc. v. Network-1 Solutions, Inc., IPR2013-
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`00385, Paper No. 17, at 5 (“The one-year bar, therefore, does not apply to Dell
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`because it filed a motion for joinder with its Petition”).
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`A.
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`Joinder will not impact the Board’s ability to complete the review
`in a timely manner
`
`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
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`42.100(c) provide that inter partes review proceedings should be completed and
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`the Board’s final decision issued within one year of institution of the review. The
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`same provisions provide the Board with flexibility to extend the one-year period by
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`up to six months for good cause, or in the case of joinder.
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`In this case, joinder should not affect the Board’s ability to issue its final
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`determination within one year because Petitioner does not raise any issues that are
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`not already before the Board. Hyundai’s Petition is based on the same grounds and
`
`same combinations of prior art as those on which a trial was instituted in the Honda
`
`IPR. Indeed, Hyundai has not raised one of the grounds on which a trial was
`
`instituted (anticipation of Claims 1, 6, and 19-21 under 35 U.S.C. § 102(a) by Fry
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`discussed at pages 25-27 of Paper 8 in the Honda IPR), thereby further minimizing
`
`any impact of Hyundai’s joinder. Hyundai’s arguments regarding the asserted
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`prior art references are also identical to those made by Honda. Compare Pet. 6-37,
`
`with IPR2013-00634, Paper 1 at 5-24, 38-48, 50-52. Further, Hyundai has retained
`
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`- 3 -
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`
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`and submitted a declaration from the same declarant as Honda, Christopher
`
`Wilson, with the only difference being that Hyundai has removed testimony
`
`regarding prior art references on which a trial was not instituted in the Honda IPR
`
`and testimony relating to the Fry prior art reference. Compare Ex. 1008, with
`
`IPR2014-00634, Ex. 1010. Accordingly, AVS should not need any additional
`
`discovery of Mr. Wilson beyond that which it has already asked for in the Honda
`
`IPR.
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`In circumstances such as these, the Board has routinely granted joinder. See,
`
`e.g., Dell Inc. v. Network-1 Solutions, Inc., Case No. IPR2013-00385, Paper No.
`
`17, at 6-7 (Jul. 29, 2013 ) (finding that Dell’s assertion of the same grounds of
`
`unpatentability as Avaya and Dell’s submission of a declaration from the same
`
`declarant as Avaya weighed in favor of granting Dell’s motion to join Avaya’s
`
`IPR).
`
`The first deadline in Honda’s IPR is the due date for AVS’s response to
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`Honda’s petition (37 C.F.R. § 42.120) and any motion to amend the patent (37
`
`C.F.R. § 42.121), which is currently set for October 27, 2014, more than one
`
`month after the date of this motion. Because Hyundai’s IPR petition does not raise
`
`any new issues, AVS’s response would not require any analysis beyond what AVS
`
`is already required to undertake to respond to Honda’s petition.
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`- 4 -
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`
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`Hyundai respectfully submits that briefing and discovery in the joined
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`proceeding can be simplified to minimize any impact to the schedule or the volume
`
`of materials to be submitted to the Board. Given that Hyundai and Honda will be
`
`addressing the same prior art and the same bases for rejection of the claims at issue
`
`using the same expert, Hyundai does not envision any differences in position.
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`Similar to the procedures ordered by the Board in IPR2013-00385 and IPR2013-
`
`00256, Hyundai is willing to be limited to separate filings, if any, of no more than
`
`seven pages directed only to points of disagreement with Honda with the
`
`understanding that it will not be permitted any separate arguments in furtherance of
`
`those advanced in Honda’s consolidated filings. See Dell, IPR2013-00385, Paper
`
`No. 17, at 8 (“This approach should avoid introducing delay that could arise from
`
`lengthy briefing by each party, while providing the parties an opportunity to
`
`address all issues that may arise. These limitations on additional filings by Dell
`
`also avoid placing an undue burden on [the patentee].”); Motorola Mobility LLC v.
`
`Softview LLC, IPR2013-00256, Paper No. 10, at 9. And because Hyundai does not
`
`expect that it will have any points of disagreement with Honda, it does not believe
`
`that it is likely to make any separate filings.
`
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`- 5 -
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`
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`B.
`
`Joinder would enhance efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies among the
`pending proceedings
`
`The validity of the ’697 patent is squarely at issue in, as described above,
`
`both the Underlying Litigation and the Honda IPR, and a final written decision in
`
`the consolidated inter partes review has the potential to resolve the Underlying
`
`Litigation with respect to the ’697 patent. Allowing a consolidated inter partes
`
`review would also avoid potential inconsistency and avoid prejudice to Hyundai in
`
`the event that Honda and AVS reach a resolution of their disputes during the
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`pendency of the IPR. 35 U.S.C. § 317(a) provides that an inter partes review
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`“shall be terminated with respect to any petitioner upon the joint request of the
`
`petitioner and the patent owner” unless the Board has already reached its decision
`
`on the merits. If no petitioner remains after settlement, “the Office may terminate
`
`the review.” Id. Thus, if AVS and Honda were to reach a settlement, the Honda
`
`IPR could terminate without proceeding to a final written decision.
`
`Indeed, if the Board terminated the Honda IPR, Hyundai and Kia would be
`
`forced to start over before the District Court with the exact same arguments that
`
`Honda has already shown it is reasonably likely to prevail on. (See Honda IPR,
`
`Paper No. 8.) The potential for inconsistency would be also heightened because
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`Hyundai and Kia would face a higher burden before the District Court of proving
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`the invalidity of claims 1, 2, 5, 6, 10, 17-22, 26, 27, 32, 40, and 61 by clear and
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`- 6 -
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`convincing evidence, as opposed to the lower burden here of a preponderance of
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`the evidence. See 35 U.S.C. § 316(e). Having to overcome a higher burden to get
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`the same result is prejudicial to Hyundai, especially since Hyundai has complied
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`with the statute and regulations in filing its Petition and the instant motion.
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`Additionally, if the Board permits Hyundai to join the Honda IPR, and AVS
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`is correct in its belief that claims 1, 2, 5, 6, 10, 17-22, 26, 27, 32, 40, and 61 of the
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`’697 patent are patentable, Hyundai will be estopped from further challenging the
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`validity of the patent in the Underlying Litigation, avoiding duplication of efforts
`
`at least as to Hyundai. See 35 U.S.C. § 315(e)(1). Accordingly, to avoid duplicate
`
`efforts, the possibility of inconsistencies, and prejudice to Hyundai, joinder is
`
`appropriate.
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`Joinder will not prejudice AVS or Honda
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`C.
`Permitting joinder will not prejudice AVS or Honda. Hyundai raises no
`
`issues that are not already before the Board, such that joinder would not affect the
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`timing of the Honda IPR or the content of AVS’s Patent Owner response due on
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`October 27, 2014. Hyundai also believes any additional costs to AVS and Honda
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`associated with its participation in the Honda IPR will be minor, and certainly not
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`so great as to justify the potential prejudice to Hyundai if the Honda IPR were to
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`be otherwise terminated before a final written decision by the Board.
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`- 7 -
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`Finally, even if the Board were to determine that joinder will require a minor
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`extension of the schedule, such an extension is permitted by law and is not a reason
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`for denying joinder. 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c).
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`III. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 6,738,697 be granted and that the
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`proceedings be joined with Honda Motor Co. v. American Vehicular Sciences
`
`LLC, Case IPR2014-00634.
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`The undersigned attorney may be reached by telephone at (202) 408-4365.
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`Although Petitioner believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
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`required for this Motion to Deposit Account No. 06-0916.
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`
`
`Dated: September 25, 2014
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`Respectfully submitted,
`
`
`
`
`
`
`
`/Ed Naidich/
`Ed Naidich
`Registration No. 43,826
`Finnegan, Henderson, Farabow, Garrett and
`Dunner, LLP
`901 New York Ave. NW
`Washington DC 20001
`
`Lead Counsel for Petitioners
`
`- 8 -
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion for
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`Joinder was served on September 25, 2014, upon the following parties via UPS
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`overnight delivery:
`
`Thomas J. Wimbiscus
`McAndrews, Held & Malloy, Ltd.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`
`
`Courtesy Copies to:
`
`
`Brian Roffe, Esq.
`8170 McCormick Boulevard, Suite 223
`Skokie, IL 60076-2914
`
`Demetrios Anaipakos
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing, P.C.
`1221 McKinney Street, Suite 3460
`Houston, TX 77010
`
`
`
`
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`Dated: September 25, 2014
`
`
`
`/Ed Naidich/
`Ed Naidich
`Registration No. 43,826
`Finnegan, Henderson, Farabow, Garrett and
`Dunner, LLP
`901 New York Ave. NW
`Washington DC 20001
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