Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________________________
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`NISSAN NORTH AMERICA, INC.
`
`Petitioner
`
`V.
`
`SIGNAL IP, INC.
`
`Patent Owner
`
`Patent No. 6,012,007
`
`Filing Date: June 3, 1997
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`Issue Date: January 4, 2000
`
`Title: OCCUPANT DETECTION METHOD AND APPARATUS FOR AIR
`
`BAG SYSTEMS
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`MOTION FOR JOINDER UNDER
`35 U.S.C. 315(c) AND 37 C.F.R. § 42.22 AND 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2015-01004
`
`
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________________________
`
`NISSAN NORTH AMERICA, INC.
`
`Petitioner
`
`V.
`
`SIGNAL IP, INC.
`
`Patent Owner
`
`Patent No. 6,012,007
`
`Filing Date: June 3, 1997
`
`Issue Date: January 4, 2000
`
`Title: OCCUPANT DETECTION METHOD AND APPARATUS FOR AIR
`
`BAG SYSTEMS
`
`
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`
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`MOTION FOR JOINDER UNDER
`35 U.S.C. 315(c) AND 37 C.F.R. § 42.22 AND 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2015-01004
`
`
`
`
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`
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`
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`Nissan North America, Inc. (“Nissan”) respectfully submits this Motion for
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`Joinder, together with a Petition for Inter Partes Review of U.S. Patent No.
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`6,012,007 (“the Nissan Petition”) filed contemporaneously herewith. Pursuant to
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`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Nissan requests institution of an
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`inter partes review and joinder with the inter partes review in American Honda
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`Motor Co., Inc. v. Signal IP, Inc., IPR2015-01004 (“the Honda IPR”) , which the
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`Board instituted on October 1, 2015 and concerns the same patent, U.S. Patent No.
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`6,012,007 (“the 007 Patent”). Nissan’s request for joinder is timely under 37
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`C.F.R. §§ 42.22 and 42.122(b) as it is being submitted no later than one month
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`after the October 1, 2015 institution date of the Honda IPR.
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`Joinder is appropriate because it will promote efficient resolution of the
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`validity of the involved patent, and it will not prejudice the parties to the Honda
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`IPR. The Nissan Petition is narrowly tailored to the same claims, prior art, and
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`grounds for unpatentability that are the subject of the Honda IPR. In addition,
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`Nissan is willing to streamline discovery and briefing. Nissan submits that joinder
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`is appropriate because it will not unduly burden or prejudice the parties to the
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`Honda IPR while efficiently resolving the question of the 007 Patent’s validity in
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`a single proceeding.
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`Page 2 of 13
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`Signal IP, Inc. (“Signal IP” or “Patent Owner”) filed civil actions
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`against Fiat U.S.A., Inc. et al., Case No. 2-14-cv-13864, in the U.S. District Court
`
`for the Eastern District Michigan, on October 7, 2014; Ford Motor Company, Case
`
`No. 2-14-cv-13729, in the U.S. District Court for the Eastern District of Michigan,
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`on September 26, 2014; Porsche Cars North America, Inc., Case No. 2-14-cv-
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`03114, in the U.S. District Court for the Central District of California, on April 23,
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`2014 (case dismissed); Ford Motor Company, Case No. 2-14-cv-03106, in the U.S.
`
`District Court for the Central District of California, on April 23, 2014; Fiat U.S.A.,
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`Inc. et al., Case No. 2-14-cv-03105, in the U.S. District Court for the Central
`
`District of California, on April 23, 2014; Volkswagen Group of America, Inc. d/b/a
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`Audi of America, Inc. et al., Case No. 2-14-cv-03113, in the U.S. District Court for
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`the Central District of California, on April 23, 2014; Jaguar Land Rover North
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`America, LLC, Case No. 2-14-cv-03108, in the U.S. District Court for the Central
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`District of California, on April 23, 2014 (case dismissed); Volvo Cars of North
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`America, LLC, Case No. 2-14-cv-03107, in the U.S. District Court for the Central
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`District of California, on April 23, 2014 (case dismissed); BMW of North
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`America, LLC et al., Case No. 2-14-cv-03111, in the U.S. District Court for the
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`Central District of California, on April 23, 2014; Mercedes-Benz USA, LLC et al.,
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`Case No. 2-14-cv-03109, in the U.S. District Court for the Central District of
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`Page 3 of 13
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`
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`California, on April 23, 2014; Nissan North America, Inc., Case No. 2-14-cv-
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`02962, in the U.S. District Court for the Central District of California, on April 17,
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`2014; Subaru of America, Inc., Case No. 2-14-cv-02963, in the U.S. District Court
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`for the Central District of California, on April 17, 2014; Suzuki Motor America,
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`Inc., Case No. 8-14-cv-00607, in the U.S. District Court for the Central District of
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`California, on April 17, 2014 (case dismissed); Kia Motors America, Inc., Case
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`No. 2-14-cv-02457, in the U.S. District Court for the Central District of California,
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`on April 1, 2014; American Honda Motor Co., Inc. et al., Case No. 2-14-cv-02454,
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`in the U.S. District Court for the Central District of California, on April 1, 2014;
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`Mazda Motor of America, Inc., Case No. 8-14-cv-00491, in the U.S. District Court
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`for the Central District of California, on April 1, 2014; Mazda Motor of America,
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`Inc., Case No. 2-14-cv-02459, in the U.S. District Court for the Central District of
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`California, on April 1, 2014; Mitsubishi Motors North America, Inc., Case No. 8-
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`14-cv-00497, in the U.S. District Court for the Central District of California, on
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`April 1, 2014 (case dismissed); Mitsubishi Motors North America, Inc., Case No.
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`2-14-cv-02462, in the U.S. District Court for the Central District of California, on
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`April 1, 2014 (case dismissed);Takata Seat Belts Inc., Case No. 5-04-cv-00464, in
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`the U.S. District Court for the Western District of Texas, on May 27, 2004; Toyota
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`North America, Inc., et al., Case No. 2-15-cv-5162, in the U.S. District Court for
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`the Central District of California, on July 8, 2015; Hyundai Motor America, Case
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`Page 4 of 13
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`
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`No. 2-15-cv-5166, in the U.S. District Court for the Central District of California,
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`on July 8, 2015; and Hyundai Motor America, Case No. 8-15-cv-1085, in the U.S.
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`District Court for the Central District of California, on July 8, 2015.
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`2.
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`On April 3, 2015, American Honda Motor Co., Inc. et al. filed a
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`petition (“the Honda Petition”) for inter partes review requesting cancellation of
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`claims 1-3, 5, 9, and 17-21 of the 007 Patent. Four proposed grounds for review
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`were presented in the Honda Petition.
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`3.
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`On October 1, 2015, the Board instituted Honda’s Petition as to two of
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`the proposed grounds, finding that a reasonable likelihood existed that the Honda
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`Petition would prevail in showing unpatentability of claims 1-3, 5, 9, and 17-21 of
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`the 007 Patent. The proposed grounds in the Nissan Petition are substantively
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`identical to the two grounds on which the Board instituted Honda’s Petition.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`
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`
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`A. Legal Standard
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`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
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`inter partes review petition to an instituted inter partes review proceeding. See 35
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`U.S.C. § 315(c). A motion for joinder must be filed within one month of the Board
`
`instituting an original inter partes review. 37 C.F.R. § 42.122(b). In deciding
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`whether to exercise its discretion and permit joinder, the Board considers factors,
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`including: (1) the reasons why joinder is appropriate; (2) whether the new petition
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`Page 5 of 13
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`presents any new grounds of unpatentability; (3) what impact, if any, joinder
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`would have on the trial schedule for the existing review; and (4) how briefing and
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`discovery may be simplified. See Kyocera Corporation v. Softview LLC, Case
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`IPR2013-00004, Paper 15 at 4 (April 24, 2013)).
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`
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`
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`B. Petitioner’s Motion for Joinder is Timely
`
`The Board has the authority under the statute to join a properly-filed second
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`IPR petition to an instituted IPR proceeding. The present Motion for Joinder is
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`timely because it is filed within one month of the October 1, 2015 institution
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`decision of the Honda IPR. See 37 C.F.R. § 42.122(b). Further, the one-year bar
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`set forth in 37 C.F.R. § 42.101(b) does not apply to the Nissan Petition because this
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`Motion for Joinder is filed concurrently with the Nissan Petition. 37 C.F.R. §
`
`42.122(b).
`
`
`
`
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`C. Each Factor Weighs in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder
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`here. Specifically, the Nissan Petition does not present any new grounds of
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`unpatentability, rather it is substantively identical to the Honda Petition. Further,
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`joinder will have minimal, if any, impact on the trial schedule, as all issues are
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`substantively identical and Nissan will accept an “understudy” role. See IPR2015-
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`01353, Decision Instituting IPR Review, Motion for Joinder, paper 11 at 6;
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`(granting IPR where petitioners requested an “understudy” role); see also Motion
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`Page 6 of 13
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`for Joinder, paper 4 at 5-7. Lastly, the briefing and discovery will be simplified by
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`resolving all issues in a single proceeding. Accordingly, joinder is appropriate
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`here. See IPR2015-01353, Decision Instituting IPR Review, Motion for Joinder,
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`paper 11 at 5-6 (granting institution of IPR and motion for joinder where
`
`petitioners relied “on the same prior art, same arguments, and same evidence,
`
`including the same expert and a substantively identical declaration.”); see also
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`Motion for Joinder, paper 4 at 4-5.
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`
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`
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`1. Joinder is Appropriate with the Honda IPR
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`Joinder with the Honda IPR is appropriate because the Nissan Petition
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`involves the same patent, challenges the same claims, relies on the same expert
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`declaration, and is based on the same grounds and combinations of prior art
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`submitted in the Honda Petition. Id. Further, the Nissan Petition relies solely on
`
`the two grounds from the Honda Petition that the Board instituted on October 1,
`
`2015. The Honda Petition is substantively identical to the Honda Petition,
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`containing only minor differences related to formalities of a different party filing
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`the petition. Other than these differences merely related to formalities, there are no
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`changes to the facts, citations, evidence, or arguments presented in the Honda
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`Petition. Because these proceedings are substantively identical, good cause exists
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`for joining this proceeding with the Honda IPR so that the Board can efficiently
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`Page 7 of 13
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`resolve all grounds in both the Nissan and Honda Petitions in a single proceeding.
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`Id.
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`
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`2. Petitioner Proposes No New Grounds of Unpatentability
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`The Nissan Petition does not present any new grounds of unpatentability.
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`The Nissan Petition is substantively identical to the Honda Petition, except that it
`
`only includes the two grounds on which the Board instituted review. The Nissan
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`Petition presents the unpatentability of the same claims of the same patent in the
`
`same way as the Honda Petition.
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`3. Joinder Will Not Unduly Burden or Negatively Impact the Honda
` IPR Trial Schedule
`
`Because the Nissan Petition is substantively identical to the Honda Petition,
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`
`
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`
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`with the same grounds rejecting the same claims, as instituted by the Board, there
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`are no new issues for Patent Owner to address. Due to the same issues being
`
`presented in the Honda Petition, Patent Owner will not be required to present any
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`additional responses or arguments. See IPR2015-01353, Decision Instituting IPR,
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`Motion for Joinder, paper 11 at 6 (granting IPR and motion for joinder where
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`“joinder should not necessitate any additional briefing or discovery from Patent
`
`Owner beyond that already required in [the original IPR].”); see also Motion for
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`Joinder, paper 4 at 5-7. Without any new issues present, there is no reason to delay
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`or alter the trial schedule already present in the Honda IPR, and Petitioner
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`explicitly consents to the existing trial schedule. Further, the Patent Owner
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`Page 8 of 13
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`
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
`
`Preliminary Response already filed in the Honda IPR addresses any and all issues
`
`in the Nissan Petition, since the issues are substantively identical to the issues of
`
`the Honda Petition. See IPR2015-01004, Patent Owner’s Preliminary Response,
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`paper 6.
`
`
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`The Patent Owner Response will also not be negatively impacted because
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`the issues presented in the Honda Petition are identical to the issues presented in
`
`the Nissan Petition. Patent Owner will not be required to provide any additional
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`analysis or arguments beyond what it will already provide in responding to the
`
`Honda Petition. Id. Also, because the Nissan Petition relies on the same expert
`
`and a substantively identical declaration, only a single deposition is needed for the
`
`proposed joined proceeding.
`
`
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`Joinder of this proceeding with the Honda IPR does not unduly burden or
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`negatively impact the trial schedule in any meaningful way. Further, even if a
`
`small adjustment of the trial schedule was necessary, this is already provided for in
`
`the rules and is a routine undertaking by parties in IPR proceedings. See 37 C.F.R.
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`§ 42.100(c). Thus, a slight adjustment in the trial schedule, should one be needed,
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`is not enough of a reason to deny joining the present Nissan Petition with the
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`Page 9 of 13
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`Honda IPR.
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
`
`
`
`
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`4. Procedures to Simplify Briefing and Discovery
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`The Honda Petition and the Nissan Petition present substantively identical
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`grounds of rejection, including the same art combinations against the same claims.
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`Additionally, Petitioner explicitly agrees to take an “understudy” role, as described
`
`by the Board:
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`(a) all filings by [Nissan] in the joined proceeding be consolidated
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`with [the filings of the petitioner in the Honda IPR], unless a filing
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`solely concerns issues that do not involve [the petitioner in the Honda
`
`IPR]; (b) [Nissan] shall not be permitted to raise any new grounds not
`
`already instituted by the Board in the [Honda IPR], or introduce any
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`argument or discovery not already introduced by [the petitioner in the
`
`Honda IPR]; (c) [Nissan] shall be bound by any agreement between
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`[Patent Owner] and [the petitioner in the Honda IPR] concerning
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`discovery and/or depositions; and (d) [Nissan] at deposition shall not
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`receive any direct, cross examination or redirect time beyond that
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`permitted for [the petitioner in the Honda IPR] alone under either 37
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`C.F.R. § 42.53 or any agreement between [Patent Owner] and [the
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`petitioner in the Honda IPR].
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`Page 10 of 13
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`
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`See IPR2014-00550, paper 38 at 5 (Apr. 10, 2015). Nissan will assume the
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`primary role only if Honda ceases to participate in the Honda IPR. The petitioner
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`in the Honda IPR has no objection to Petitioner joining in an “understudy” role.
`
`
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`Thus, by Petitioner accepting an “understudy” role, Patent Owner and
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`Petitioner can comply with the current trial schedule and avoid any duplicative
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`efforts by the Board or the Patent Owner. These steps will minimize any potential
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`complications or delay that potentially may result by joinder. See IPR2015-01353,
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`Decision Instituting IPR, paper 11 at 6-7 (granting IPR and motion for joinder
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`because “joinder would increase efficiency by eliminating duplicative filings and
`
`discovery, and would reduce costs and burdens on the parties as well as the Board”
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`where petitioners agreed to an “understudy” role.); see also Motion for Joinder,
`
`paper 4 at 6-7.
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`Page 11 of 13
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`IV. CONCLUSION
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`Based on the factors discussed above, Nissan respectfully requests that the
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`
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`Board grant the Nissan Petition for Inter Partes Review of U.S. Patent No.
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`6,012,007 and grant joinder with the American Honda Motor Co., Inc. v. Signal IP,
`
`Inc., IPR2015-01004 proceeding.
`
`
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`Respectfully submitted,
`
`Dated: October 30, 2015
`
`/s/ Tawni L. Wilhelm
`
`
`
`
`
`Tawni L. Wilhelm, Reg. No. 47,456
`Shook, Hardy & Bacon L.L.P.
`2555 Grand Blvd.
`Kansas City, Missouri 64108
`T: (816) 474-6550
`F: (816) 421-5547
`Lead Counsel for Petitioner
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`
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`Page 12 of 13
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`Motion for Joinder to IPR2015-01004 of U.S. Patent No. 6,012,007
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`
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`
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`Certificate of Service
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on October 30, 2015 a complete and entire copy of this MOTION
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`FOR JOINDER UNDER 35 U.S.C. 315(c) AND 37 C.F.R. § 42.22 AND
`
`42.122(b) TO RELATED INTER PARTES REVIEW IPR2015-01004 was
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`provided by email to the Patent Owner by serving the correspondence address of
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`record as follows:
`
`Ascenda Law Group, PC
`333 W San Carlos St.
`Suite 200
`San Jose CA 95110
`Email: tarek.fahmi@ascendalaw.com; holly.atkinson@ascendalaw.com;
`patents@ascendalaw.com
`
`
`Tarek Fahmi of the Ascenda firm consented to electronic service.
`
`/s/ Tawni L. Wilhelm
`
`
`
`
`
`Tawni L. Wilhelm (Reg. No. 47,456)
`Shook, Hardy & Bacon L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108
`Telephone: (816) 474-6550
`Fax: (816) 421-5547
`Email: twilhelm@shb.com
`
`Attorney for Petitioner NISSAN NORTH
`AMERICA, INC.
`
`
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`
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`
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`Page 13 of 13
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