`571-272-7822
`
`Paper 10
`Entered: January 29, 2015
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`
`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 IPR2015-00262
`Patent 5,845,000
`____________
`
`
`
`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Inter Partes Review and Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`I. BACKGROUND
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`Toyota Motor Corporation (“Petitioner” or “Toyota”) filed a Petition
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`for inter partes review of claims 10, 11, 16, 17, 19, 20, and 23 of U.S. Patent
`
`No. 5,845,000 (Ex. 1101, “the ’000 patent”). Paper 1 (“Pet.”). Along with
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`the Petition, Petitioner filed a Motion for Joinder, seeking to join with
`
`
`
`IPR2015-00262
`Patent 5,845,000
`
`Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC, IPR2014-
`
`00647. Paper 3 (“Mot.”). American Vehicular Sciences LLC (“Patent
`
`Owner” or “AVS”), filed a Preliminary Response and an Opposition to the
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`Motion for Joinder. Paper 9 (“Prelim. Resp.”); Paper 7 (“Opp.”). Petitioner
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`filed a Reply to Patent Owner’s Opposition to the Motion for Joinder. Paper
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`8. We have jurisdiction under 35 U.S.C. § 314.
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`For the reasons discussed below, we deny Petitioner’s Motion for
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`Joinder and do not institute an inter partes review as to the challenged
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`claims of the ’000 patent.
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`A. Related Proceedings
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`Petitioner states that the ’000 patent is the subject of the following
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`district court proceeding: American Vehicular Sciences LLC v. Toyota
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`Motor Corp., No. 14-CV-13017 (E.D. Mich.). Pet. 2. Petitioner previously
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`filed a petition for inter partes review of the ’000 patent in Toyota Motor
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`Corp. v. American Vehicular Sciences LLC, IPR2013-00424. See Pet. 2.
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`Also, the parties indicate that Petitioner filed a request for ex parte
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`reexamination of the ’000 patent on November 13, 2014, which has been
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`assigned Reexamination Control No. 90/020,078. Pet. 3; Paper 6, 2.
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`2
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`IPR2015-00262
`Patent 5,845,000
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`B. Asserted Grounds of Unpatentability
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`Petitioner contends that the challenged claims are unpatentable based
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`on the following grounds (Pet. 9–27):
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`Reference(s)
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`Basis
`
`Claims
`
`Lemelson1
`Lemelson and Nishio2
`Lemelson and Asayama3
`Lemelson and Yanagawa4
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`35 U.S.C. § 103(a)
`
`10, 11, 19, and 23
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`35 U.S.C. § 103(a)
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`10, 11, 19, and 23
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`35 U.S.C. § 103(a)
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`10, 11, 19, and 23
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`35 U.S.C. § 103(a)
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`16, 17, and 20
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`II. ANALYSIS
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`A. Motion for Joinder
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`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
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`USA, LLC v. American Vehicular Sciences LLC, IPR2014-00647. Petitioner
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`timely filed the Motion within one month after the institution of IPR2014-
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`00647. See 37 C.F.R. § 42.122(b).
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`Joinder of parties is permitted in related review proceedings as set
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`forth in 35 U.S.C. § 315(c), which provides:
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`(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, “Lemelson”).
`2 U.S. Patent No. 5,541,590, issued on July 30, 1996 (Ex. 1104, “Nishio”).
`3 U.S. Patent No. 5,214,408, issued on May 25, 1993 (Ex. 1106,
`“Asayama”).
`4 Japanese Unexamined Patent Application Publication No. S62-131837 (Ex.
`1107). English translation of Ex. 1107 (Ex. 1108 “Yanagawa”).
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`3
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`IPR2015-00262
`Patent 5,845,000
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`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
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`Although 35 U.S.C. § 315(b) bars inter partes review when a petition
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`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
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`patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a
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`request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set
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`forth in the preceding sentence shall not apply to a request for joinder under
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`subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b).
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`In the present case, Petitioner was served with a complaint alleging
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`infringement of the ’000 patent more than one year prior to filing the
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`Petition in this proceeding. See Pet. 2. Thus, absent joinder of this
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`proceeding with IPR2014-00647, institution of inter partes review is barred.
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`As a moving party, Petitioner has the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
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`motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial
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`schedule for the existing review; and (4) specifically address how briefing
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`and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC,
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`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15); FAQ
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`H5 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp
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`(last visited Jan. 20, 2015).
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`Petitioner seeks joinder with Mercedes-Benz USA, LLC v. American
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`Vehicular Sciences LLC, IPR2014-00647. In that proceeding, we authorized
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`an inter partes review to be instituted as to claims 11, 15, 16, 17, 19, 20, and
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`4
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`IPR2015-00262
`Patent 5,845,000
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`23 of the ’000 patent. Mercedes-Benz USA, LLC v. American Vehicular
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`Sciences LLC, Case IPR2014-00647 (Paper 13). Thereafter, Mercedes-Benz
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`USA, LLC and AVS filed a joint motion to terminate IPR2014-00647, along
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`with a true copy of the written settlement agreement between the parties, in
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`accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Mercedes-
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`Benz USA, LLC v. American Vehicular Sciences LLC, Case IPR2014-00647
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`(Paper 17; Ex. 2001). Upon consideration of the motion, we entered
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`judgment terminating IPR2014-00646. Mercedes-Benz USA, LLC v.
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`American Vehicular Sciences LLC, Case IPR2014-00647 (Paper 24).
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`Because IPR2014-00647 is no longer pending, it cannot serve as a
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`proceeding to which another proceeding may be joined. We, therefore, must
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`deny Petitioner’s Motion for Joinder.
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`Even if IPR2014-00647 had not been terminated, other considerations
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`weigh in favor of denying Petitioner’s Motion for Joinder. In its Motion,
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`Petitioner asserts that the issues raised in its Petition are “substantively
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`identical” to the issues in IPR2014-00647. Mot. 10. However, one
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`difference between the instant Petition and the petition in IPR2014-00647 is
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`that Petitioner’s arguments rely on the declaration of Dr. Nikolaos
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`Papanikolopoulos (Ex. 1109), who did not offer testimony in IPR2014-
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`00647. See id. at 12; Pet. 6, 10–16, 23–27. Petitioner provides no
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`justification for why another declarant would be necessary in a joined
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`proceeding. Although Petitioner asserts that its declarant “arrives at the
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`same conclusions for the same reasons as Mercedes’[s] expert,” Mot. 11, the
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`declaration of Dr. Papanikolopoulos nonetheless constitutes new evidence
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`that would be introduced if this proceeding were joined with IPR2014-
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`00647.
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`5
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`IPR2015-00262
`Patent 5,845,000
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`Furthermore, Petitioner filed an earlier petition for inter partes review
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`of the ’000 patent—Toyota Motor Corp. v. American Vehicular Sciences
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`LLC, IPR 2013-00424 (Paper 2). See Pet. 2. That earlier petition was filed
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`within one year of the date on which Petitioner was served with a complaint
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`alleging infringement of the ’000 patent. Id. Petitioner could have
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`presented in the earlier petition the grounds and arguments it now asserts,
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`but it did not do so. Nor has Petitioner explained sufficiently why the
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`petition in IPR2013-00424 did not contain the grounds and arguments set
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`forth in the Petition in this proceeding.
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`Joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary. 35 U.S.C. § 315(c). When exercising that
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`discretion, the Board is mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding. See 37 C.F.R. § 42.1(b). In
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`view of the facts and circumstances of this case, we determine that Petitioner
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`has not met its burden to show that joinder would be appropriate, even if
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`IPR2014-00647 had not been terminated.
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`B. Denial of Inter Partes Review
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`Petitioner was served with a complaint alleging infringement of the
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`’000 patent more than one year prior to filing the Petition in this proceeding.
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`See Pet. 2. Accordingly, in view of the denial of the requested relief of
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`joinder with IPR2014-00647, institution of an inter partes review as
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`requested by Petitioner is barred by statute. See 35 U.S.C. § 315(b);
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`37 C.F.R. § 42.101(b).
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`6
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`IPR2015-00262
`Patent 5,845,000
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`III. CONCLUSION
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`For the foregoing reasons, we deny Petitioner’s motion for joinder.
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`Because Petitioner is barred under 35 U.S.C. § 315(b) from inter partes
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`review of the ’000 patent, we do not institute review as to any of the
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`challenged claims.
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`IV. ORDER
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`Accordingly, it is:
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`ORDERED that Petitioner’s Motion for Joinder is denied; and
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`FURTHER ORDERED that the Petition is denied as to all challenged
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`claims and all grounds and that no trial is instituted.
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`
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`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
`
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`7
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