Paper 25
`
`Trials@uspto.gov
`Date: June 6, 2016
`
`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 IPR2015-01585 Case IPR2015-016131
`Patent 5,917,405
`_______________
`
`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. 90/013,300
`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 IPR2015-01585 Case IPR2015-01613
`Patent 5,917,405
`
`
`On January 29, 2016, inter partes review of U.S. Patent No. 5,917,405 (“the
`‘405 patent”) was instituted as to claims 1, 2, 3, 11, 16, and 17. IPR2015-01585,
`Paper 11. On February 1, 2016, a second inter partes review was instituted as to
`claims 1, 2, 3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 of the ʼ405 patent. IPR2015-
`01613, Paper 7. Claim 1, which is at issue in both IPRs, is the subject of Ex Parte
`Reexamination No. 90/013,300 (“300 Reexam”). Currently in the reexamination,
`claim 1 stands rejected as anticipated by Ramono (U.S. Patent No. 5,070,320),
`Kniffin (U.S. Patent No. 6,072,402), Ryoichi (U.S. Patent No. 5,113,427), and
`Pagliaroli (U.S. Patent No. 5,276,728). 300 Reexam May 22, 2015 Final Rejection
`4–16.2 Pagliaroli also is asserted to be anticipatory prior art to claim 1 in IPR2015-
`01585. Kniffin and Ryoichi are asserted to anticipate claim 1 in IPR2015-01613.
`In addition, there is a claim construction argument advanced in the reexamination
`in regards to the “control device” terms that is substantially similar to an argument
`advanced in the IPRs. See IPR2015-01585, Paper 11 at 9–13; IPR2015-01613,
`Paper 7 at 4–8; 300 Br. 5–28. Thus, due to the substantial overlap between the
`IPRs and the Reexamination we sua sponte stay the 300 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
`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
`
`
`2 This Final Rejection has been appealed to this Board. An appeal brief was filed
`November 21, 2015 (“300 Br.”), and the Examiner’s Answer was filed January 20,
`2016.
`
`2
`
`

`
`Case IPR2015-01585 Case IPR2015-01613
`Patent 5,917,405
`
`patent. Here, claim 1 of the ’405 patent is challenged in two IPRs. Further those
`IPRs include challenges to claim 1 based on the same art at issue in the 300
`Reexam and similar claim construction arguments. Thus, there is significant
`overlap between the IPRs and the 300 Reexam and therefore, claim 1 of the ’405
`patent is subject to a patentability determination in multiple proceedings before the
`Office. That scenario merits staying the 300 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 90/013,300, 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 90/013,300, 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 90/013,300
`will be restarted upon lifting of the stay.
`
`3
`
`
`
`

`
`Case IPR2015-01585 Case IPR2015-01613
`Patent 5,917,405
`
`PETITIONER:
`D. Clay Holloway (IPR2015-01585)
`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 (IPR2015-01613)
`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