UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`AMERICAN VEHICULAR SCIENCES LLC
`
`Patent Owner
`
`
`
`Patent No. 5,845,000
`
`Issue Date: December 1, 1998
`
`Title: OPTICAL IDENTICATION AND MONITORING SYTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`
`
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`Case No. IPR2015-00262
`
`
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`
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`
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`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`AMERICAN VEHICULAR SCIENCES LLC
`
`Patent Owner
`
`
`
`Patent No. 5,845,000
`
`Issue Date: December 1, 1998
`
`Title: OPTICAL IDENTICATION AND MONITORING SYTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`
`
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`Case No. IPR2015-00262
`
`
`
`
`
`
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
`
`
`Toyota Motor Corporation’s (“Toyota’s”) motion to join IPR2014-00647
`
`should be denied on its face for four statutorily-compelled reasons:
`
`(1) The only parties
`
`to IPR2014-00647 (patent owner American
`
`Vehicular Sciences and petitioner Mercedes-Benz USA, LLC) have already settled
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`and moved to terminate the IPR proceeding, rendering Toyota’s motion to join
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`moot as there will be no proceeding to join. See, e.g., Google, Inc. et al v.
`
`Personalweb Tech. et al, Case IPR2014-00977 at Paper 10 (P.T.A.B. 2014) (where
`
`the parties to the IPR that Google sought to join settled after Google filed its
`
`motion to join, but before the Board decided the motion, the Board found that
`
`“[g]iven that [the IPR] is no longer pending, it cannot serve as a proceeding to
`
`which another proceeding may be joined. As such, the termination of [the IPR]
`
`renders Google’s Motion for Joinder moot.”) (emphasis added).
`
`(2) Allowing Toyota to join IPR2014-00647 would violate the estoppel
`
`provisions of 35 U.S.C. §315(e)(1). More than sixteen months ago, Toyota filed
`
`its own IPR petition on the same patent. (See IPR2013-00424.) In that IPR,
`
`depositions were taken, all substantive papers have been filed, and an oral
`
`argument was held. All that remains in connection with Toyota’s earlier-filed
`
`petition (IPR2013-00424) is a Final Written Decision. That final decision will
`
`issue by January 14, 2015. Because a final decision will issue, Toyota cannot
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`“maintain a proceeding before the Office with respect to that claim or any ground
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`
`
`1
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`
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
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`that the petitioner raised or reasonably could have raised during that inter partes
`
`review.” 35 U.S.C. §315(e)(1) (emphasis added). Here, it is undisputed that each
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`of the grounds that Toyota raises in its new petition were grounds that it reasonably
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`could have raised in its earlier one. This statutory provision is intended to bar
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`precisely what Toyota is trying to do by virtue of its motion for joinder—get a
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`second bite at the apple where it fears that it will lose its first IPR. It would also
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`circumvent the requirement of a “just, speedy, and inexpensive” resolution of
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`Toyota’s first IPR.
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`(3) Toyota’s attempt to get a second bite at the apple would circumvent
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`the statutory requirement for completing an IPR proceeding within one year of
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`institution, as well as the statutory bar for filing an IPR petition within one year of
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`service of a lawsuit. Toyota’s petition in IPR2013-00424 was filed on July 12,
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`2013 (within one year of the July 26, 2012 service date of a co-pending lawsuit
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`between Toyota and AVS). Here, in view of the settlement between Mercedes and
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`AVS, if Toyota is allowed to join IPR2014-00647, it would be the only petitioner,
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`achieving the same result as if Toyota simply filed a new IPR more than sixteen
`
`months after the statutory bar date. Such a loop-hole would be plainly contrary to
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`Congressional intent.
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`(4)
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`Further and notwithstanding the foregoing, Toyota’s request for
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`joinder is something that falls squarely within the Board’s discretion to deny to
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`
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`2
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
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`avoid gamesmanship and to prevent a party from improperly seeking a “do-over”
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`of a failed IPR. Toyota should not be allowed to endlessly re-litigate the same
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`patent, raising new arguments only after seeing its initial arguments fail. See, e.g.,
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`Medtronic, Inc. et al v. EndoTach, LLC, Case IPR2014-00695, Paper 18 (P.T.A.B.
`
`Sept. 25, 2014) (“We are not persuaded that Petitioner has shown that joinder is
`
`justified in this instance. . . . This case represents a ‘second bite at the apple’ for
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`Petitioner, who has received the benefit of seeing our Decision to Institute in the
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`prior case involving the same parties and patent claims.”) Further, because Toyota
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`seeks to use a different expert declarant, joining Toyota to the IPR originally filed
`
`by Mercedes would require still additional work even if Mercedes had not settled.
`
`See Samsung Elec. Co., Ltd. v. Arendi S.A.R.L., Case IPR2014-01142, Paper 11
`
`(P.T.A.B. Oct. 2, 2014) (denying request to join because Petitioner did not
`
`adequately show need for its own expert declarant).
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`For these reasons, which are discussed in more detail below, the Board
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`should deny Toyota’s motion for joinder. Toyota already had its chance to attack
`
`the ‘057 patent, and nothing in the statute or Rules allows endless “do-overs.”
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`1.
`
`The Termination of IPR2014-00647 Renders Toyota’s Motion for
`Joinder Moot
`
`Toyota’s motion to join should first of all be denied on its face for a simple
`
`reason—the parties to IPR2014-00647 have already settled and moved to terminate
`
`
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`3
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
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`the proceeding, leaving nothing for Toyota to join. This is the exact scenario that
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`was faced by the Board in Google, Inc., Case IPR2014-00977. There, the Board
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`denied Google’s request to join in part because Google filed its motion to join late,
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`but also because after Google moved to join, the parties to the IPR settled and
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`moved to terminate. See id.
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`In fact, the parties in Google, Inc., Case IPR2014-00977 settled several
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`months after Google filed its motion to join, as opposed to here, where AVS and
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`Mercedes were already in the process of negotiating a settlement before Toyota
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`filed its joinder motion, and finalized the settlement mere days after Toyota’s
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`motion. The timing in Google, Inc., Case IPR2014-00977 was as follows:
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`• 4/15/14 – Rackspace’s IPR petition against PersonalWeb patent granted.
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`• 6/18/14 - Google filed its motion to Join (late).
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`• 10/16/14 - Rackspace and PersonalWeb settled and requested termination.
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`• 10/30/14 – the Board issued its decision denying the motion to join.
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`In denying Google’s Motion for Joinder, the Board stated that “[g]iven that
`
`IPR2014-00059 is no longer pending, it cannot serve as a proceeding to which
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`another proceeding may be joined. As such, termination of IPR2014-00059
`
`renders Google’s Motion for Joinder moot.” Google, Inc., Case IPR2014-00977 at
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`Paper 10. For the same reasons, the Board should deny Toyota’s Motion for
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`Joinder.
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`
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`4
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
`
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`2.
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`The Estoppel Provisions of 35 U.S.C. §315 Bar Joinder Here
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`Toyota’s Motion for Joinder with IPR2014-00647 must also be denied
`
`because granting it would violate the estoppel provisions of 35 U.S.C. §315.
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`Importantly, Toyota already filed its own IPR petition (IPR2013-00424) on the
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`exact same patent over sixteen months ago. Over the next thirteen months, Toyota
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`and AVS filed responses, took depositions of experts, and conducted an oral
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`hearing before the Board. Absent “good cause shown,” a Final Written Decision in
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`that IPR must issue by January 14, 2015. The statute expressly provides that
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`because a final decision will issue, Toyota (“[t]he petitioner in an inter partes
`
`review . . . that results in a final written decision”) cannot “maintain a proceeding
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`before the Office with respect to that claim or any ground that the petitioner raised
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`or reasonably could have raised during that inter partes review.” 35 U.S.C.
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`§315(e)(1) (emphasis added). Nothing in the statute or rules provides an exception
`
`to this estoppel in cases of joinder. See, e.g., 35 U.S.C. § 316(a)(11) (permitting
`
`only an “adjust[ment of] time periods,” not a relaxation of estoppel, “in the case of
`
`joinder”).
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`Here, Toyota is trying to join IPR2014-00647 to assert invalidity of the same
`
`claims it attacked in IPR2013-00424. Moreover, Toyota is trying to assert
`
`obviousness arguments that it easily could have—but did not—raise in IPR2013-
`
`00424. Contrary to Toyota’s misguided plea that AVS or the Board somehow kept
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`
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`5
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
`
`Toyota from raising certain obviousness arguments, it was Toyota’s own decision
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`to not raise those arguments in its petition. Toyota easily could have made those
`
`obviousness arguments, as they involved the same references that Toyota asserted
`
`in its Petition (i.e., Toyota was clearly aware of the references and their
`
`applicability). In connection with a deposition, in which Toyota sought to
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`improperly question AVS’s expert regarding grounds that Toyota chose not to
`
`raise, the Board properly limited Toyota to the grounds that it raised it in its
`
`petition and the grounds that were instituted. Only now, after six months of
`
`preliminary proceedings, and ten months of trial in IPR2013-00424, and after
`
`seeing AVS’s rebuttal arguments, does Toyota wish that it would have raised
`
`additional or different arguments in its petition. But that is the whole point of the
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`estoppel provision of 35 U.S.C. §315—to prevent attempts like Toyota’s for a
`
`second bite at the apple on grounds that “could have been raised.” See, e.g., 77 FR
`
`48612 (“the estoppel provisions in 35 U.S.C. 315(e), as amended, and 35 U.S.C.
`
`325(e) are to prevent abusive serial challenges to patents”).
`
`3.
`
`Allowing Toyota To Join IPR2014-00647 Would Violate 35 U.S.C.
`§315(b) and 35 U.S.C. §316(a)(11)
`
`The patent statute bars institution of an inter partes review when the petition
`
`is filed more than one year after the petitioner is served with a complaint alleging
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`infringement of the patent. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). In
`
`
`
`6
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`
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
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`addition, 35 U.S.C. §316(a)(11) provides that final determination in an IPR must
`
`be issued not later than one year after the date of institution. 35 U.S.C.
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`§315(a)(11). The statute does provide an exception to the bar date of 35 U.S.C.
`
`§315(b) in instances of joinder. See 35 U.S.C. §315(b). But that exception was
`
`intended to only apply to petitioners that had not already filed their own earlier IPR
`
`petitions, and it was not intended to effectively provide an extension to an earlier
`
`IPR petitioner in violation of 35 U.S.C. §316(a)(11).
`
`As a matter of logic, the joinder exception to the one-year-from-suit bar date
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`cannot have been intended to be a loop-hole to allow petitioners to game the
`
`system and seek a do-over by joining a later-filed IPR. And it certainly could not
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`have been intended to allow a situation such as this, where due to the settlement
`
`between AVS and Mercedes, Toyota would be the only petitioner, effectively
`
`having obtained an expansion of its prior IPR. In fact, AVS has settled all other
`
`litigation and IPRs against all other parties in connection with the ‘000 patent.
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`To allow Toyota’s motion for joinder would effectively gut all of the
`
`deadlines set in the statute. See 35 U.S.C. § 316(b) (“In prescribing regulations
`
`under this section, the Director shall consider the effect of any such regulation on
`
`the economy, the integrity of the patent system, the efficient administration of the
`
`Office, and the ability of the Office to timely complete proceedings instituted
`
`under this chapter.”).
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`
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`7
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`
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
`
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`The joinder exception was intended to allow only a third party to be added to
`
`an IPR petition that is proceeding anyway, where there is no undue prejudice to the
`
`patent owner. In a typical scenario, there is no harm in adding a third party to a
`
`pending IPR proceeding because the patent owner will have to respond to the same
`
`arguments regardless. And there is no inequity, abuse of the system, or unfair
`
`prejudice to the patentee, where the third party is not seeking a second bite at the
`
`apple, and is merely participating in an IPR for the first time. See, e.g., Medtronic,
`
`Inc. et al v. EndoTach, LLC, Case IPR2014-00695, Paper 18 (P.T.A.B. Sept. 25,
`
`2014) (“[W]hen a § 315(b) bar would apply absent joinder, we hesitate to allow a
`
`petitioner a second bite one month after institution in a first case, at the expense of
`
`scheduling constraints for everyone, as well as additional costs (and potential
`
`prejudice) to Patent Owner, absent a good reason for doing so. . . . Thus, we do not
`
`perceive that there is no discernable prejudice to Patent Owner if we grant the
`
`Joinder Motion.”); Samsung Electronics Co. Ltd. v. Arendi S.A.R.L., Case
`
`IPR2014-01142, Paper 11 (P.T.A.B. Oct. 2, 2014) (“In view of the facts and
`
`circumstances of this case, Petitioner, as movant, has not met its burden to show
`
`why joinder is appropriate, consistent with the goal of securing the just, speedy,
`
`and inexpensive resolution of every proceeding.”).
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`
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`8
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`
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
`
`
`4.
`
`The Board Has Discretion To Deny Motions For Joinder That
`Would Improperly Give a Petitioner A Second Bite At The Apple
`
`Finally, even if none of the above statutory reasons for denying Toyota’s
`
`Joinder Motion applied (and they do apply), the Board should deny it under its
`
`discretion to avoid abuse and harassment. The decision to grant joinder is
`
`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When exercising its
`
`discretion, patent trial regulations, including the rules for joinder, “shall be
`
`construed to secure the just, speedy, and inexpensive resolution of every
`
`proceeding.” See 37 C.F.R. § 42.1(b). The Patent Office has repeatedly indicated
`
`that it “seeks to protect patent owners from harassment via successive petitions by
`
`the same or related parties, to prevent parties from having a ‘second bite at the
`
`apple,’ and to protect the integrity of both the USPTO and Federal Courts by
`
`assuring that all issues are promptly raised and vetted.” 77 FR 48756.
`
`Here, granting Toyota’s Motion for Joinder would have one and only one
`
`result—giving Toyota a second bite at the apple, to raise new arguments it failed to
`
`raise in its earlier petition, at the expense of AVS, Honda and the Board. If Toyota
`
`is joined to IPR2014-00647, it would be the only petitioner. It would be in exactly
`
`the same place as if the Board had allowed Toyota to add belated obviousness
`
`arguments to IPR2014-00424 that were not in its petition (something the Board
`
`expressly rejected), or if the Board allowed Toyota to file another new, statutorily-
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`
`
`9
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`
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
`
`late IPR petition. If nothing else, the Board should exercise its discretion to
`
`prevent Toyota from opening a loophole in the IPR statute and rules that would
`
`allow it to do what numerous statutory provisions prohibit.
`
`Further, because Toyota seeks to use a different expert declarant, joining
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`Toyota to the IPR originally filed by Mercedes would result in additional work
`
`even if Mercedes had not settled. For this reason alone, the Board has denied
`
`requests for joinder. See Samsung Elec. Co., Ltd., et al. v. Arendi S.A.R.L., Case
`
`IPR2014-01142, Paper 11 (P.T.A.B. Oct. 2, 2014) (denying request for joinder;
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`“Petitioner does not indicate, however, why another expert might be required in the
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`event of settlement by the petitioner in IPR2014-00208. . . . In view of the facts
`
`and circumstances of this case, Petitioner, as movant, has not met its burden to
`
`show why joinder is appropriate, consistent with the goal of securing the just,
`
`speedy, and inexpensive resolution of every proceeding. Petitioner's motion for
`
`joinder is, thus, denied.”).
`
`Accordingly, for the above reasons, the Board should deny Toyota’s request
`
`for joinder because it is moot, it is a non-allowed attempt at a second bite at the
`
`apple, and it is inconsistent with the goal of securing the just, speedy, and
`
`inexpensive resolution of every proceeding.
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`Respectfully submitted,
`
`10
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`
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
`
`
`
`
`/Scott P. McBride/
`Scott P. McBride
`Registration No. 42,853
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`DATE: December 4, 2014
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`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`CUSTOMER NUMBER: 23446
`
`
`
`
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`11
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`
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2015-00262
`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that the Patent Owner’s Opposition to Motion for Joinder in
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`connection with Inter Partes Review Case IPR2015-00262 was served on this 4th
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`day of December by electronic mail to the following:
`
`Lead Counsel
`Matt Berkowitz
`(Reg. No. 57,215)
`mberkowitz@kenyon.com
`ptab@kenyon.com
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax: 212-425-5288
`
`
`
`
`Back-up Counsel
`Thomas R. Makin
`(pro hac vice to be requested upon authorization)
`tmakin@kenyon.com
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax: 212-425-5288
`
`
`
`
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`
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`MCANDREWS HELD & MALLOY
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`
`
`CUSTOMER NUMBER: 23446
`
`Date: December 4, 2014
`
`
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`
`
`/ Scott P. McBride /
`Scott P. McBride
`Registration No. 42,853
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