Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Date: June 6, 2016
`
`
`
`
`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.
`_______________
`
`COXCOM, LLC,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01509 Case IPR2015-01611 Case IPR2015-017601
`Patent 6,549,130 B1
`
`
`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 IPR2015-01509 Case IPR2015-01611 Case IPR2015-01760
`Patent 6,549,130 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. 90/013,301
`35 U.S.C. § 315(d) and 37 C.F.R. §§ 42.3, 42.122(a)
`
`
`
`2
`
`

`
`Case IPR2015-01509 Case IPR2015-01611 Case IPR2015-01760
`Patent 6,549,130 B1
`
`
`On January 6, 2016, inter partes review of U.S. Patent No. 6,549,130 B1
`(“the ‘130 patent”) was instituted as to claims 26, 29, 30, 33, 42, 43, 48, 60, and
`68. IPR2015-01509, Paper 10. On January 28, 2016, a second inter partes review
`was instituted as to claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 91, 92,
`138, 139, and 143 of the ʼ130 patent. IPR2015-01611, Paper 7. On February 17,
`2016, a third inter partes review was instituted as to claims 1, 8, 10, 12, 17, 98,
`119, 124, 145, and 149 of the ’130 patent. IPR2015-01760, Paper 8. Claim 48,
`which is at issue in two of the three IPRs, is the subject of Ex Parte Reexamination
`No. 90/013,301 (“301 Reexam”). Currently in the reexamination, claim 48 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). 301 Reexam May 22, 2015
`Final Rejection 4–12 (“Final Rejection”).2 In addition, currently in the
`reexamination, claim 48 stands rejected as anticipated by Pagliaroli (U.S. Patent
`No. 5,276,728). Final Rejection 12–17. Pagliaroli also is asserted to be
`anticipatory prior art to claim 48 in IPR2015-01509. 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 two of the
`IPRs. See IPR2015-01509, Paper 10 at 8–10; IPR2015-01611, Paper 7 at 5–7; 301
`Br. 18–29, 31–33. Thus, due to the substantial overlap between the IPRs and the
`Reexamination we sua sponte stay the 301 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
`
`
`2 This Final Rejection has been appealed to this Board. An appeal brief was filed
`November 21, 2015 (“301 Br.”), and the Examiner’s Answer was filed January 20,
`2016.
`
`3
`
`

`
`Case IPR2015-01509 Case IPR2015-01611 Case IPR2015-01760
`Patent 6,549,130 B1
`
`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
`patent. Here, the ’130 patent is challenged in three IPRs and claim 48 of the ’130
`patent is challenged in two of those IPRs. Further, one of those IPRs is
`challenging claim 48 based on the same art at issue in the 301 Reexam. Thus,
`there is significant overlap between the IPRs and the 301 Reexam and therefore,
`claim 48 of the ’130 patent is subject to a patentability determination in multiple
`proceedings before the Office. That scenario merits staying the 301 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 90/013,301, 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 90/013,301, 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 90/013,301
`will be restarted upon lifting of the stay.
`
`4
`
`
`
`

`
`Case IPR2015-01509 Case IPR2015-01611 Case IPR2015-01760
`Patent 6,549,130 B1
`
`PETITIONER:
`D. Clay Holloway (IPR2015-01509 & IPR2015-01760)
`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 (IPR2015-01611)
`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
`
`5