Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: January 29, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00261
`Patent 6,772,057 B2
`____________
`
`
`
`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Inter Partes Review and Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`I. BACKGROUND
`
`Toyota Motor Corporation (“Petitioner” or “Toyota”) filed a Petition
`
`for inter partes review of claims 1–4, 7–10, 31, 41, 56, 59–62, and 64 of
`
`U.S. Patent No. 6,772,057 B2 (Ex. 1101, “the ’057 patent”). Paper 1
`
`(“Pet.”). Along with the Petition, Petitioner filed a Motion for Joinder,
`
`
`571-272-7822
`
`Paper 10
`Entered: January 29, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00261
`Patent 6,772,057 B2
`____________
`
`
`
`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Inter Partes Review and Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`I. BACKGROUND
`
`Toyota Motor Corporation (“Petitioner” or “Toyota”) filed a Petition
`
`for inter partes review of claims 1–4, 7–10, 31, 41, 56, 59–62, and 64 of
`
`U.S. Patent No. 6,772,057 B2 (Ex. 1101, “the ’057 patent”). Paper 1
`
`(“Pet.”). Along with the Petition, Petitioner filed a Motion for Joinder,
`
`
`
`IPR2015-00261
`Patent 6,772,057 B2
`
`seeking to join with Mercedes-Benz USA, LLC v. American Vehicular
`
`Sciences LLC, IPR2014-00646. Paper 3 (“Mot.”). American Vehicular
`
`Sciences LLC (“Patent Owner” or “AVS”), filed a Preliminary Response
`
`and an Opposition to the Motion for Joinder. Paper 9 (“Prelim. Resp.”);
`
`Paper 7 (“Opp.”). Petitioner filed a Reply to Patent Owner’s Opposition to
`
`the Motion for Joinder. Paper 8. We have jurisdiction under 35 U.S.C.
`
`§ 314.
`
`For the reasons discussed below, we deny Petitioner’s Motion for
`
`Joinder and do not institute an inter partes review as to the challenged
`
`claims of the ’057 patent.
`
`A. Related Proceedings
`
`Petitioner states that the ’057 patent is the subject of the following
`
`district court proceeding: American Vehicular Sciences LLC v. Toyota
`
`Motor Corp., No. 14-CV-13019 (E.D. Mich.). Pet. 2. Petitioner previously
`
`filed a petition for inter partes review of the ’057 patent in Toyota Motor
`
`Corp. v. American Vehicular Sciences LLC, IPR2013-00419. See Pet. 2.
`
`Also, the parties indicate that Petitioner filed a request for ex parte
`
`reexamination of the ’057 patent on November 13, 2014, which has been
`
`assigned Reexamination Control No. 90/020,077. Pet. 3; Paper 6, 2.
`
`2
`
`
`
`IPR2015-00261
`Patent 6,772,057 B2
`
`B. Asserted Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable based
`
`on the following grounds (Pet. 8–27):
`
`Reference(s)
`
`Basis
`
`Claims
`
`Lemelson1
`
`35 U.S.C. § 103(a)
`
`Lemelson and Nishio2
`
`35 U.S.C. § 103(a)
`
`1–4, 7–10, 41, 56, 59–61,
`and 64
`1–4, 7–10, 41, 56, 59–61,
`and 64
`
`Lemelson and
`Borcherts3
`
`35 U.S.C. § 103(a)
`
`31 and 62
`
`II. ANALYSIS
`
`A. Motion for Joinder
`
`We first address Petitioner’s Motion for Joinder under 35 U.S.C.
`
`§ 315(c) and 37 C.F.R. § 42.122(b) seeking to join with Mercedes-Benz
`
`USA, LLC v. American Vehicular Sciences LLC, IPR2014-00646. Petitioner
`
`timely filed the Motion within one month after the institution of IPR2014-
`
`00646. See 37 C.F.R. § 42.122(b).
`
`Joinder of parties is permitted in related review proceedings as set
`
`forth in 35 U.S.C. § 315(c), which provides:
`
`(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
`
`
`
`1 U.S. Patent No. 6,553,130, issued Apr. 22, 2003 (Ex. 1102).
`2 European Patent Application Publication No. 0582236A1, published
`Feb. 9, 1994 (Ex. 1104).
`3 U.S. Patent No. 5,245,422, issued Sept. 14, 1993 (Ex. 1105).
`
`3
`
`
`
`IPR2015-00261
`Patent 6,772,057 B2
`
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`Although 35 U.S.C. § 315(b) bars inter partes review when a petition
`
`is filed more than one year after the petitioner (or the petitioner’s real party-
`
`in-interest or privy) is served with a complaint alleging infringement of the
`
`patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a
`
`request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set
`
`forth in the preceding sentence shall not apply to a request for joinder under
`
`subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b).
`
`In the present case, Petitioner was served with a complaint alleging
`
`infringement of the ’057 patent more than one year prior to filing the
`
`Petition in this proceeding. See Pet. 2. Thus, absent joinder of this
`
`proceeding with IPR2014-00646, institution of inter partes review is barred.
`
`As a moving party, Petitioner has the burden of proof in establishing
`
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
`
`motion for joinder should: (1) set forth the reasons why 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) specifically address how briefing
`
`and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC,
`
`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15); FAQ
`
`H5 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp
`
`(last visited Jan. 23, 2015).
`
`Petitioner seeks joinder with Mercedes-Benz USA, LLC v. American
`
`Vehicular Sciences LLC, IPR2014-00646. In that proceeding, we authorized
`
`an inter partes review to be instituted as to claims 1, 2, 4, 7, 16, 30, 31, 40,
`
`4
`
`
`
`IPR2015-00261
`Patent 6,772,057 B2
`
`41, 43, 46, 56, 59–62, 77, 78, and 81–83 of the ’057 patent. Mercedes-Benz
`
`USA, LLC v. American Vehicular Sciences LLC, Case IPR2014-00646
`
`(Paper 13). Thereafter, Mercedes-Benz USA, LLC and AVS filed a joint
`
`motion to terminate IPR2014-00646, along with a true copy of the written
`
`settlement agreement between the parties, in accordance with 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(b). Mercedes-Benz USA, LLC v. American
`
`Vehicular Sciences LLC, Case IPR2014-00646 (Paper 18; Ex. 2001). Upon
`
`consideration of the motion, we entered judgment terminating IPR2014-
`
`00646. Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC,
`
`Case IPR2014-00646 (Paper 25). Because IPR2014-00646 is no longer
`
`pending, it cannot serve as a proceeding to which another proceeding may be
`
`joined. We, therefore, must deny Petitioner’s Motion for Joinder.
`
`Even if IPR2014-00646 had not been terminated, other considerations
`
`weigh in favor of denying Petitioner’s Motion for Joinder. In its Motion,
`
`Petitioner asserts that the issues raised in its Petition are “substantively
`
`identical” to the issues in IPR2014-00646. Mot. 11. Petitioner
`
`acknowledges, however, that there are some differences between its Petition
`
`and the petition in IPR2014-00646. Id. One significant difference is that the
`
`arguments in the Petition rely on the declaration of Dr. Nikolaos
`
`Papanikolopoulos (Ex. 1106), who did not offer testimony in IPR2014-
`
`00646. See id. at 12; Pet. 6, 9–15, 24–27. Petitioner provides no
`
`justification for why another declarant would be necessary in a joined
`
`proceeding. Although Petitioner asserts that its declarant “arrives at the
`
`same conclusions for the same reasons as Mercedes’[s] expert,” Mot. 12, the
`
`declaration of Dr. Papanikolopoulos nonetheless constitutes new evidence
`
`5
`
`
`
`IPR2015-00261
`Patent 6,772,057 B2
`
`that would be introduced if this proceeding were joined with IPR2014-
`
`00646.
`
`In addition, the Petition in the present case challenges several
`
`dependent claims that are not at issue in IPR2014-00646. Id. at 12.
`
`Petitioner contends that these claims will not result in any further issues that
`
`will need to be addressed and argued because Patent Owner does not dispute
`
`that Lemelson discloses the additional limitations. Id. Nevertheless, if these
`
`additional claims were included in a joined proceeding, we would need to
`
`determine initially whether the Petition demonstrates there is a reasonable
`
`likelihood Petitioner would prevail in challenging those claims, see
`
`37 C.F.R. § 42.108, and ultimately whether Petitioner has established by a
`
`preponderance of the evidence that the claims are unpatentable, see
`
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`Furthermore, Petitioner filed an earlier petition for inter partes review
`
`of the ’057 patent—Toyota Motor Corp. v. American Vehicular Sciences
`
`LLC, IPR 2013-00419 (Paper 3). See Pet. 2. That earlier petition was filed
`
`within one year of the date on which Petitioner was served with a complaint
`
`alleging infringement of the ’057 patent. Id. Petitioner could have
`
`presented in the earlier petition the grounds and arguments it now asserts,
`
`but it did not do so. Nor has Petitioner explained sufficiently why the
`
`petition in IPR2013-00419 did not contain the grounds and arguments set
`
`forth in the Petition in this proceeding.
`
`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. 35 U.S.C. § 315(c). When exercising that
`
`discretion, the Board is mindful that patent trial regulations, including the
`
`rules for joinder, must be construed to secure the just, speedy, and
`
`6
`
`
`
`IPR2015-00261
`Patent 6,772,057 B2
`
`inexpensive resolution of every proceeding. See 37 C.F.R. § 42.1(b). In
`
`view of the facts and circumstances of this case, we determine that Petitioner
`
`has not met its burden to show that joinder would be appropriate, even if
`
`IPR2014-00646 had not been terminated.
`
`B. Denial of Inter Partes Review
`
`Petitioner was served with a complaint alleging infringement of the
`
`’057 patent more than one year prior to filing the Petition in this proceeding.
`
`See Pet. 2. Accordingly, in view of the denial of the requested relief of
`
`joinder with IPR2014-00646, institution of an inter partes review as
`
`requested by Petitioner is barred by statute. See 35 U.S.C. § 315(b);
`
`37 C.F.R. § 42.101(b).
`
`III. CONCLUSION
`
`For the foregoing reasons, we deny Petitioner’s motion for joinder.
`
`Because Petitioner is barred under 35 U.S.C. § 315(b) from inter partes
`
`review of the ’057 patent, we do not institute review as to any of the
`
`challenged claims.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s Motion for Joinder is denied; and
`
`FURTHER ORDERED that the Petition is denied as to all challenged
`
`
`
`
`
`
`
`claims and all grounds and that no trial is instituted.
`
`
`
`7
`
`
`
`IPR2015-00261
`Patent 6,772,057 B2
`
`FOR PETITIONER:
`
`Matthew Berkowitz
`Antony Pfeffer
`Thomas Makin
`mberkowitz@kenyon.com
`apfeffer@kenyon.com
`tmakin@kenyon.com
`
`FOR PATENT OWNER:
`
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`McAndrews Held & Malloy
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
