Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: October 24, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HYUNDAI MOTOR COMPANY,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01543
`Patent 6,738,697 B2
`____________
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: October 24, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HYUNDAI MOTOR COMPANY,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01543
`Patent 6,738,697 B2
`____________
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2014-01543
`Patent 6,738,697
`
`
`I. INTRODUCTION
`
`On September 25, 2014, Hyundai Motor Company (“Hyundai”) filed
`
`a petition (“Pet.”) for inter partes review of U.S. Patent No. 6,738,697
`
`B2 (Ex. 1001, “the ’697 patent”). Paper 1. Hyundai indicates that Patent
`
`Owner (“AVS”) has asserted the ’697 patent against Hyundai in an action
`
`for patent infringement, in the U.S. District Court for the Eastern District of
`
`Texas. Mot. 2. Also on September 25, 2014, Hyundai filed a Motion for
`
`Joinder (“Mot”) to join this proceeding with American Honda Motor Co.,
`
`Inc. v. American Vehicular Sciences LLC, Case IPR2013-00634 (“the Honda
`
`IPR”) in which the Board already instituted inter partes review of the ’697
`
`patent. Paper 3. Despite having been given authorization to do so, neither
`
`American Honda Motor Co., Inc. (“Honda”), the Petitioner in the Honda
`
`IPR, nor AVS filed an opposition to Hyundai’s Motion for Joinder. In a
`
`separate decision, entered concurrently herewith, we institute trial in this
`
`proceeding.
`
`The Motion for Joinder is granted.
`
`II. DISCUSSION
`
`An inter partes review may be joined with another inter partes
`
`review. The statutory provision governing joinder of inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(c) JOINDER. -- If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`
` 2
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`IPR2014-01543
`Patent 6,738,697
`
`
`As the movant, Hyundai bears the burden to show that joinder is
`
`appropriate. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth
`
`the reasons joinder is appropriate; (2) identify any new grounds of
`
`unpatentability asserted in the petition; (3) explain what impact (if any)
`
`joinder would have on the trial schedule for the existing review; and (4)
`
`address specifically how briefing and discovery may be simplified. See
`
`Frequently Asked Question (“FAQ”) H5 on the Board’s website at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`
`
`Hyundai represents that each ground proposed by Hyundai is
`
`“identical” to a ground that has been instituted for trial in the Honda IPR,
`
`and that Hyundai even did not propose all of the grounds which have been
`
`instituted for trial in the Honda IPR. Mot. 3. Hyundai also represents that
`
`its arguments are “identical” to those made by Honda in the Honda IPR. Id.
`
`Hyundai further indicates that with respect to the grounds it has proposed, it
`
`relies on the same declaration testimony of Mr. Christopher Wilson, albeit
`
`submitted in a separate declaration, as was relied on by Honda for those
`
`same grounds. Id. at 3–4.
`
`
`
`Under these circumstances, Hyundai indicates that joinder would not
`
`affect the pending schedule in the Honda IPR or increase the complexity of
`
`the Honda IPR. Mot. 1. For instance, Hyundai states that “AVS should not
`
`need any additional discovery of Mr. Wilson beyond that which it has
`
`already asked for in the Honda IPR,” and that “AVS’s response would not
`
`require any analysis beyond what AVS is already required to undertake to
`
`respond to Honda’s petition.” Mot. 4.
`
` 3
`
`
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`
`
`
`IPR2014-01543
`Patent 6,738,697
`
`
`
`Hyundai further agrees to have consolidated filings with Honda, in
`
`case of joinder, to minimize burden and impact of joinder. Mot. 1.
`
`Specifically, Hyundai states:
`
`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.
`
`Mot. 5.1 Hyundai further states: “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. Id.
`
`Given the representations of Hyundai as noted above, we are
`
`persuaded that the impact of joinder on the Honda IPR will be minimal.
`
`Also, joinder will enhance efficiency, avoid duplication of efforts, and
`
`reduce the potential of inconsistency among proceedings.
`
`III. ORDER
`
`It is
`
`ORDERED that IPR2014-01543 is joined with IPR2014-00634;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`
`trial in the joined proceedings are the same as those for which trial was
`
`instituted in IPR2013-00634;
`
`
`1 We understand Hyundai’s representation to be that in case its Motion for
`Joinder is granted, Honda will be in control of the contents of the
`consolidated or joint filings of Honda and Hyundai as Petitioners, and that
`Hyundai, to the extent it has any disagreement with a position in a joint
`filing, will be limited to a separate filing of much limited page length.
`
` 4
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`IPR2014-01543
`Patent 6,738,697
`
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`IPR2013-00634 is unchanged, and as modified by any authorized stipulation
`
`by the parties;
`
`FURTHER ORDERED that, in the joined proceeding, Honda and
`
`Hyundai will file papers, except for motions which do not involve the other
`
`party, as consolidated filings; Honda will identify each such filing as a
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`Consolidated Filing and will be responsible for completing all consolidated
`
`filings; Hyundai may file an additional paper, concurrent with each
`
`consolidated filing, not to exceed seven pages, which may address only
`
`points of disagreement with positions asserted in the consolidated filing;
`
`any such filing by Hyundai must specifically identify and explain each point
`
`of disagreement; Hyundai may not file separate arguments in support of
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`points made in Honda’s consolidated filing;
`
`FURTHER ORDERED that, in addition to responding to any
`
`consolidated filing, AVS may respond separately, but concurrently, to any
`
`separate Hyundai filing; any such response by AVS to a Hyundai filing may
`
`not exceed seven pages in length and is limited to issues raised in the
`
`Hyundai filing;
`
`FURTHER ORDERED that Honda and Hyundai will designate
`
`attorneys to conduct the cross-examination of any witnesses produced by
`
`AVS and the redirect of any witnesses produced by Honda or Hyundai
`
`within the time frame normally allotted by the rules for one party; Honda
`
`and Hyundai will not receive any separate cross-examination or redirect
`
`time;
`
`FURTHER ORDERED that any requests by any party for additional
`
`deposition time must be brought before the Board;
`
` 5
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`
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`IPR2014-01543
`Patent 6,738,697
`
`
`FURTHER ORDERED that this proceeding (IPR2014-01543) is
`
`terminated under 37 C.F.R. § 42.72 and all further filings in the joined
`
`proceeding shall be made in IPR2014-00634; and
`
`FURTHER ORDERED that the case caption in IPR2014-00634 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`sample on the next page.
`
`
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` 6
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`IPR2014-01543
`Patent 6,738,697
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMERICAN HONDA MOTOR CO., INC.,
`HYUNDAI MOTOR COMPANY,
`Petitioners,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00634
`Case IPR2014-01543
`Patent 6,738,697 B2
`____________
`
`
`
`
`
`
` 7
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`IPR2014-01543
`Patent 6,738,697
`
`PETITIONER:
`
`Edward Naidich
`Christopher Kurpinski
`ed.naidich@finnegan.com
`christopher.kurpinski@finnegan.com
`
`PATENT OWNER:
`
`Thomas J. Wimbiscus
`Scott P. McBride
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`PETITIONER in IPR2014-00634
`
`Joseph Melnik
`Joseph Beauchamp
`H. Albert Liou
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`
` 8
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