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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`Hyundai Motor Company
`Petitioner
`
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`
`
`Patent No. 8,036,788
`Filing Date: August 9, 2007
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`_________________
`
`
`Inter Partes Review No. Unassigned
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`__________________________________________________________________
`
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. §§ 42.22 AND 42.122(b)
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`
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`Hyundai Motor Company (“Hyundai”) submits at the same time as this
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`motion a Petition for Inter Partes Review of claims 1-7, 13, and 20 of U.S. Patent
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`No. 8,036,788 (“the ‘788 patent”) (“Petition”). Hyundai respectfully requests that
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`its Petition be granted and that the proceedings be joined in accordance with 35
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`U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b) with the pending
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`inter partes review initiated by Honda Motor Co. (“Honda”) concerning the same
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`patent: American Honda Motor Co. Inc., v. American Vehicular Sciences, LLC,
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`Case No. IPR2014-00629 (the “Honda IPR”).
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`The Board recently granted a similar motion filed by Hyundai requesting
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`joinder with another IPR initiated by Honda involving a related American
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`Vehicular Sciences, LLC (“AVS”) patent. Hyundai Motor Co. v. Am. Veh. Scis.,
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`Case No. IPR2014-01543, Paper No. 11 at 3-6 (Oct. 24, 2014). The present
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`motion presents the same set of circumstances as Hyundai’s earlier motion that
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`was granted by the Board, namely: (i) each ground proposed by Hyundai is
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`identical to a ground that has been instituted for trial in the Honda IPR; (ii)
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`Hyundai did not even propose all of the grounds that have been instituted for trial
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`in the Honda IPR; (iii) Hyundai’s arguments are identical to those made by Honda
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`in the Honda IPR; (iv) with respect to the grounds it has proposed, Hyundai relies
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`on the same declaration testimony of Mr. Christopher Wilson, albeit submitted in a
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`separate declaration, as was relied on by Honda for those same grounds; (v)
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`Hyundai agrees to have consolidated filings with Honda, and to be limited to
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`separate filings, if any, of no more than seven pages directed only to points of
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`disagreement with Honda with the understanding that it will not be permitted any
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`separate arguments in furtherance of those advanced in Honda’s consolidated
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`filings; and (vi) because Hyundai does not expect that it will have any points of
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`disagreement with Honda, it does not believe that it is likely to make any separate
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`filings.
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`Given these circumstances, joinder is appropriate here for the same reasons
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`found by the Board in its earlier decision in Case No. IPR2014-01543.
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`Specifically, the Board found that the impact of joinder on the Honda IPR would
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`be minimal, joinder would enhance efficiency, avoid duplication of efforts, and
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`reduce the potential of inconsistency among proceedings.
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`I.
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`BACKGROUND AND RELATED PROCEEDINGS
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`AVS is the owner of the ’788 patent. On October 15, 2012, AVS sued
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`Hyundai Motor Company, Hyundai Motor America, and Hyundai Motor
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`Manufacturing Alabama, LLC (collectively “Hyundai”) in the Eastern District of
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`Texas for allegedly infringing the ’788 patent (the “Underlying Litigation”). On
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`April 15, 2014, Honda filed a petition for inter partes review of the ’788 patent.
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`The Board instituted trial in the Honda IPR on September 29, 2014 (Honda IPR,
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`Paper No. 8, at 21-22) on claims 1-7, 13, and 20. The Board set December 1, 2014,
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`as the date for AVS’s response to the petition (Honda IPR, Paper No. 9, at 6).
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`Concurrently with this Motion, Hyundai is filing a Petition for inter partes review
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`of the ’788 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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`September 29, 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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`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
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`same combinations of prior art as those on which trial has been instituted in the
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`Honda IPR. Hyundai’s arguments regarding the asserted prior art references are
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`identical to those made by Honda in its petition (Compare Pet. 8-32, with
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`IPR2013-00629, Paper 1 at 10-19, 29-36, 51-58). Further, Hyundai has retained
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`and submitted a declaration from the same declarant as Honda, Christopher
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`Wilson, with the only difference being that Hyundai has removed testimony
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`regarding prior art references on which a trial was not instituted in the Honda IPR.
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`Compare Ex. 1008, with IPR2014-00629, Ex. 1011. Accordingly, AVS should not
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`need any additional discovery of Mr. Wilson beyond what it has already asked for
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`in the Honda IPR. As noted above, the Board recently granted Hyundai’s request to
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`join an IPR initiated by Honda involving a different AVS patent under the same
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`circumstances. Hyundai Motor Co. v. Am. Veh. Scis., Case No. IPR2014-01543,
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`Paper No. 11 at 3-6 (Oct. 24, 2014).
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`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
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`C.F.R. § 42.121), which is currently set for December 1, 2014, more than one
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`month after the date of this motion. Because Hyundai’s IPR petition does not raise
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`any new issues, AVS’s response would not require any analysis beyond what AVS
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`is already required to undertake to respond to Honda’s petition.
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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
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`of materials to be submitted to the Board. Hyundai is willing to adopt the same
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`procedures ordered by the Board in IPR2014-01543 and IPR2014-00634, limiting
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`Hyundai to separate filings, if any, of no more than seven pages directed only to
`
`points of disagreement with Honda, with the understanding that Hyundai will not
`
`be permitted any separate arguments in furtherance of those advance in Honda’s
`
`consolidated filings. Hyundai Motor Corp. v. Am. Veh. Scis., IPR2014-01543,
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`Paper No. 11, at 4-6 (Oct. 24, 2014). See also, Dell, IPR2013-00385, Paper No. 17,
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`at 8 (adopting similar procedures); Motorola Mobility LLC v. Softview LLC,
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`IPR2013-00256, Paper No. 10, at 9 (same). Given that Hyundai and Honda will be
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`addressing the same prior art and the same bases for rejection using the same
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`expert, Hyundai does not envision any differences in position with Honda, and
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`does not believe that it is likely to make any separate filings.
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`B.
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`Joinder would enhance efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies among the
`pending proceedings
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`The validity of the ’788 patent is squarely at issue in, as described above,
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`both the Underlying Litigation and the Honda IPR, and a final written decision in
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`the consolidated inter partes review has the potential to resolve the Underlying
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`Litigation with respect to the ’788 patent. Allowing a consolidated inter partes
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`review would also avoid potential inconsistency and avoid prejudice to Hyundai in
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`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 “shall
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`be terminated with respect to any petitioner upon the joint request of the petitioner
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`and the patent owner” unless the Board has already reached its decision on the
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`merits. If no petitioner remains after settlement, “the Office may terminate the
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`review.” Id. Thus, if AVS and Honda were to reach a settlement, the Honda IPR
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`could terminate without proceeding to a final written decision.
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`Indeed, if the Board terminated the Honda IPR, Hyundai and Kia would be
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`forced to start over before the District Court with the exact same arguments that
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`Honda has already shown it is reasonably likely to prevail on. (See Honda IPR,
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`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 1-7, 13, and 20 by clear and convincing evidence, as
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`opposed to the lower burden here of a preponderance of the evidence. See 35
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`U.S.C. § 316(e). Having to overcome a higher burden to get the same result is
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`prejudicial to Hyundai, especially since Hyundai has complied with the statute and
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`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 1-7, 13, and 20 of the ’788 patent are patentable,
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`Hyundai will be estopped from further challenging the validity of the patent in the
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`Underlying Litigation, avoiding duplication of efforts at least as to Hyundai. See
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`35 U.S.C. § 315(e)(1). Accordingly, to avoid duplicate efforts, the possibility of
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`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
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`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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`December 1, 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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`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
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 8,036,788 be granted and that the
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`proceedings be joined with Honda Motor Co. v. American Vehicular Sciences
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`LLC, Case IPR2014-00629.
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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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`
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`Dated: October 28, 2014
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`Respectfully submitted,
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`
`
`
`
`
`
`/ 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
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`- 8 -
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Motion for
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`Joinder was served on October 28, 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
`
`
`
`/ Ed Naidich /
`Ed Naidich
`Registration No. 43,826
`Finnegan, Henderson, Farabow, Garrett and
`Dunner, LLP
`901 New York Ave. NW
`Washington DC 20001
`
`
`
`
`
`Dated: October 28, 2014
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`
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`
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