Paper 24
`Date: June 6, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`_______________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01508 Case IPR2015-016101
`Patent 6,542,076 B1
`_______________
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE, JASON J. CHUNG
`and BETH Z. SHAW, Administrative Patent Judges.
`
`
`WHITE, Administrative Patent Judge.
`
`
`ORDER
`Staying Ex Parte Reexamination No. 90/013,302
`35 U.S.C. § 315(d) and 37 C.F.R. §§ 42.3, 42.122(a)
`
`1 This Decision addresses the same issues in the above-identified cases. Therefore,
`we exercise our discretion to issue one Decision to be entered in each of the
`identified cases. The parties are not authorized to use this style of case caption.
`
`
`
`

`
`Case IPR2015-01508 Case IPR2015-01610
`Patent 6,542,076 B1
`
`
`On January 28, 2016, inter partes review of U.S. Patent No. 6,542,076 B1
`(“the ‘076 patent”) was instituted as to claims 3, 20, 65, 73, 93, 103, 104, 108 and
`205. IPR2015-01508, Paper 10. On February 1, 2016, a second inter partes
`review was instituted as to claims 3, 18, 65, 67, 68, 70, 73, 91, 103, 116, 119, 120,
`and 205 of the ’076 patent. IPR2015-01610, Paper 7. Claim 3, which is at issue in
`both IPRs, is the subject of Ex Parte Reexamination No. 90/013,302 (“302
`Reexam”). Currently in the reexamination, claim 3 stands rejected as anticipated
`by Ramono (U.S. Patent No. 5,070,320), or, alternatively, anticipated by Ryoichi
`(U.S. Patent No. 5,113,427). 302 Reexam May 22, 2015 Final Rejection 15–23
`(“Final Rejection”).2 In addition, currently in the reexamination claim 3 stands
`rejected as anticipated by Pagliaroli (U.S. Patent No. 5,276,728). Final Rejection
`24–28. Ryoichi and Pagliaroli also are asserted to be anticipatory prior art to claim
`3 in IPR2015-01610 and IPR2015-01508 respectively. In addition, there is a claim
`construction argument advanced in the reexamination in regards to the term
`“control device” that is substantially similar to an argument advanced in the IPRs.
`See IPR2015-01610, Paper 7 at 6–9, 19–22; IPR2015-01508, Paper 10 at 5–11;
`302 Br. 6–11, 18–32, 34–35. Thus, due to the substantial overlap between the
`IPRs and the Reexamination we sua sponte stay the 302 Reexam under 35 U.S.C.
`§ 315(d) and pursuant to 37 C.F.R. §§ 42.3(a), 42.122(a).
`Section 315(d) provides for the “stay, transfer, consolidation, or
`termination” of another matter or proceeding before the Office involving the same
`patent. 35 U.S.C. § 315(d); see 37 C.F.R. § 42.122(a). Our Rules specify that the
`Board may exercise exclusive jurisdiction over a patent involved in a proceeding
`
`
`2 This Final Rejection has been appealed to this Board. An appeal brief was filed
`November 21, 2015 (“302 Br.”), and the Examiner’s Answer was filed January 20,
`2016.
`
`2
`
`

`
`Case IPR2015-01508 Case IPR2015-01610
`Patent 6,542,076 B1
`
`before the Board. 37 C.F.R. §§ 42.3(a). Thus, the Board the board is authorized to
`stay a matter, such as the instant Reexamination, if that matter involves the same
`patent. Here, claim 3 of the ’076 patent is challenged in two IPRs and a
`reexamination proceeding and these challenged overlap as to the claim
`construction arguments advanced and the prior art asserted. Thus, claim 3 of the
`’076 patent is subject to a patentability determination in multiple proceedings
`before the Office. That scenario merits staying the 302 Reexam. Indeed, such a
`stay is practical as it would conserve Office resources by reducing the possibility
`of duplicative, or unnecessary, efforts. That action also would lessen the potential
`for inconsistent results.
`
`ORDER
`
`Accordingly, it is
`ORDERED that pursuant to our authority arising under 35 U.S.C. § 315(d),
`and 37 C.F.R. §§ 42.3(a), 42.122(a), Reexamination 90/013,302, is hereby stayed
`pending the termination or completion of these inter partes review proceedings;
`FURTHER ORDERED that this stay tolls all time periods for filing further
`papers in Reexamination 90/013,302, and no further papers shall be filed in that
`proceeding while this stay remains in place; and
`FURTHER ORDERED that all time periods in Reexamination 90/013,302
`will be restarted upon lifting of the stay.
`
`3
`
`
`
`

`
`Case IPR2015-01508 Case IPR2015-01610
`Patent 6,542,076 B1
`
`PETITIONER:
`D. Clay Holloway (IPR2015-01508)
`Alton Absher III
`Shayne E. O’Reilly
`Mitchell G. Stockwell
`KILPATRICK TOWNSEND & STOCKSTON LLP
`cholloway@kilpatricktownsend.com
`aabsher@kilpatricktownsend.com
`soreilly@kilpatricktownsend.com
`mstockwell@kilpatricktownsend.com
`
`Michael J. Lennon (IPR2015-01610)
`Clifford A. Ulrich
`KENYON & KENYON LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`
`PATENT OWNER:
`
`Raymond Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`SINERGIA TECHNOLOGY LAW GROUP, PLLC
`rvazquez@sinergialaw.com
`
`Steven W. Ritcheson
`INSIGHT
`swritcheson@insightplc.com
`
`
`
`4