UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`TOYOTA MOTOR CORPORATION
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`Petitioner
`
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`Patent No. 5,845,000
`Issue Date: December 1, 1998
`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`__________________________________________________________________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION FOR JOINDER WITH IPR2014-00647
`
`Case No. IPR2015-00262
`__________________________________________________________________
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`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`Patent No. 5,845,000
`Issue Date: December 1, 1998
`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`__________________________________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION FOR JOINDER WITH IPR2014-00647
`
`Case No. IPR2015-00262
`__________________________________________________________________
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`By moving to join the newly-filed IPR2015-00262 (“-262 IPR”) with IPR2014-
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`00647 (“Mercedes IPR”), Toyota is not seeking an unfair “do-over,” as AVS asserts.
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`The prohibition against a “second bite at the apple” is defined by the statutory
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`provisions, and is not, as AVS submits, a blanket ban on a petitioner ever offering
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`more than one validity challenge against the same claim. Toyota is using permitted
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`procedures to ensure that the patentability of the challenged claims over Lemelson is
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`fully considered. Otherwise, there is a risk that the claims could be confirmed
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`because of a procedural technicality whereby Toyota was prohibited from addressing
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`whether the “generated from” phrase was obvious over Lemelson in view of AVS’s
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`claim construction position.
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`In response to the instituted grounds in IPR2013-00424 (“-424 IPR”), AVS
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`offered a distinction between the challenged claims and Lemelson that, while perhaps
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`facially answering the ground of anticipation, did not even pretend to render the
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`claims nonobvious over Lemelson. Specifically, while AVS argued that Lemelson’s
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`neural network was not necessarily trained with “real data,” it made no effort to argue
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`that using “real data” was non-obvious. Then, faced with the prospect of defending
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`this very distinction against obviousness grounds in the Mercedes IPR, AVS promptly
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`settled with Mercedes, moved to terminate the IPR, and flatly refused to participate
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`any further if the Board proceeded without Mercedes.
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`Now, AVS opposes this motion by treating its motion to terminate as already
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`granted; by misreading the statute; and by hoping that the Board, in its discretion, will
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`help AVS procedurally sidestep what should be the central issue in a “just” resolution:
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`the patentability of the challenged claims.
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`I.
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`THIS MOTION IS NOT MOOT BECAUSE THE MERCEDES IPR
`HAS NOT BEEN TERMINATED
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`AVS’s argument that this motion is moot depends on an unstated and incorrect
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`assumption: that the Board will necessarily grant AVS’s motion to terminate the
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`Mercedes IPR as to both parties. But, the Board has discretion to continue the IPR
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`without the participation of the petitioner. See 35 U.S.C. § 317(a).
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`The decision relied upon by AVS in its briefing, Google, Inc. v. PersonalWeb Techs.,
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`LLC, IPR2014-00977, Paper 10 (Oct. 30, 2014) is not to the contrary. In that matter,
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`the Board did not deny Google’s joinder motion because the parties to the earlier IPR
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`“settled and moved to terminate,” as AVS asserts. (Emphasis added.) Rather, in
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`Google, the Board had actually granted the motion to terminate. See IPR2014-00977,
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`Paper 10, at 6. And, it did so after taking Google’s joinder motion into account, and
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`after emphasizing that Google had both failed timely to file its joinder motion and
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`presented insufficient reasons to waive the time limit. See IPR2014-00059, Paper 30,
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`at 3 (“More significantly, Google’s Motions for Joinder were not filed timely in
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`accordance with 37 C.F.R. § 42.122(b).”). Unlike in the Google case, Toyota timely
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`filed its joinder motion within the 30-day limit, which is a fact that the Board can and
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`should consider in ruling on the pending motion to terminate.
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`In sum, AVS’s assertion that its pending motion to terminate moots Toyota’s
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`-2-
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`
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`motion for joinder is wrong. The Board can and should decide the two motions
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`together.
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`II. GRANTING THIS MOTION WOULD NOT VIOLATE SECTION
`315(B), 315(E), OR 316(A)(11)
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`According to AVS, granting this motion would allow Toyota an impermissible
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`“second bite at the apple”; and further, would violate the estoppel provision of 35
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`U.S.C. § 315(e), the filing deadline of § 315(b), and the deadline for the Board’s
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`decision in § 316(a)(11). AVS is wrong for three reasons.
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`First, there is no blanket ban on a petitioner having multiple “bites at the
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`apple” with respect to arguing for the invalidity of a patent claim. A petitioner may
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`file for multiple IPRs; a petitioner may join another’s later IPR out of time; and, a
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`petitioner may, subject to the limitations of 35 U.S.C. § 315(b), file for an IPR after
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`having previously filed for an ex parte reexamination. The statutes and rules merely
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`place certain limits on a petitioner’s conduct after “a final written decision under
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`section 318 (a).” 35 U.S.C. § 315(e)(1). No such decision has issued in the -424 IPR,
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`so Toyota is not estopped. And, the plain language of section 315(b) provides that
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`the one-year bar “shall not apply to a request for joinder.” 35 U.S.C. § 315(b)
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`(emphasis added). The Board should reject AVS’s speculation that Congress meant
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`something other than its unambiguous words.
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`Second, AVS has emphatically refused to “participate in any way” in the
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`Mercedes IPR, if the Board chooses to continue it for any reason. Therefore, if its
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`-3-
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`IPR were joined to the Mercedes IPR, Toyota would need to do nothing further to
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`“request or maintain a proceeding before [this] Office.” See 35 U.S.C. § 315(e)(1); see
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`also 77 Fed. Reg. 46621. Even if AVS were to submit a response by its December 31,
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`2014 due date, Toyota could still potentially file a reply brief before estoppel even
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`arguably kicks-in (since a final written decision is not due until January 14, 2015).
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`Last, estoppel is limited to grounds “that the petitioner raised or reasonably
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`could have raised during that inter partes review” in the IPR. 35 U.S.C. § 315(e)(1). For
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`the reasons described in Toyota’s motion for joinder, Toyota was precluded from
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`raising the obviousness of the “generated from” limitation in the -424 IPR. As AVS
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`notes in its briefing, the Board “expressly rejected” Toyota’s attempt to raise the
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`obviousness points addressed by the current IPR petition.
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`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO SECURE
`THE “JUST” RESOLUTION OF THESE PROCEEDINGS
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`The Board’s directive to “secure the just, speedy, and inexpensive resolution of
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`every proceeding,” 37 C.F.R. § 42.1 (emphasis added), strongly suggests that the
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`Board grant joinder.
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`In the -424 IPR, AVS argued that the “generated from” language was not
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`disclosed by Lemelson because, essentially: (1) there were several known ways to train
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`neural networks, (2) the inventor chose one of them (albeit without explanation), and
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`(3) Lemelson does not specify any such choice. AVS has never claimed, nor does the
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`patent itself, that the choice of “real data” is a non-obvious one. AVS even halted the
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`-4-
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`deposition of its expert to avoid questions on the subject. In actual fact, the
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`obviousness of using “real” data is apparent from AVS’s own evidence and arguments
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`in the -424 IPR. And, in the Mercedes IPR, the Board has already determined that
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`there is a reasonable likelihood that training with “real data” would have been obvious
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`over Lemelson. The current petition focuses only on those specific and narrow
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`grounds.1
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`In the present circumstances, a “just” resolution should require the
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`obviousness of these claims over Lemelson to be resolved on the merits. AVS only
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`argues in response that the Board should prioritize the “speedy and inexpensive”
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`portion of its mandate, and replace a “just . . .resolution” with “just a resolution.”
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`The marginal time and expense needed to resolve the narrow remaining obviousness
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`issue—an issue that AVS concedes it will not even fight in this IPR—should not
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`prevent the Board from granting Toyota’s motion for joinder.
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`Dated: December 9, 2014
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`
`
`
`/Matt Berkowitz/
`Matt Berkowitz (Reg. No. 57,215)
`Lead Counsel for Petitioner
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212.425.7200, Fax. 212.425-5288
`Email: mberkowitz@kenyon.com
`
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`1
`Although Toyota’s new -262 IPR includes additional dependent claims beyond
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`those in the Mercedes IPR, AVS does not argue that they present a separate issue.
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`-5-
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`CERTIFICATE OF SERVICE
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`The undersigned hereby confirms that the foregoing Reply to Patent Owner’s
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`Opposition to Motion for Joinder with IPR2014-00647 was served on December 9,
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`2014 via email upon the following counsel of record for Patent Owner.
`
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`AVS-IPR@mcandrews-ip.com
`MCANDREWS HELD & MALLOY, LTD.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`
`
`
`/Matt Berkowitz/
`Matt Berkowitz (Reg. No. 57,215)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax: 212-425-5288
`
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