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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Kia Motors America, Inc.
`Petitioner,
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`v.
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`Signal IP, Inc.
`Patent Owner.
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`Patent No. 6,012,007
`Issued: January 4, 2000
`Filed: June 3, 1997
`Inventors: Duane Donald Fortune, Robert John Cashler
`Title: OCCUPANT DETECTION METHOD AND APPARATUS FOR AIR
`BAG SYSTEMS
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`
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`Inter Partes Review No. ________
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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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`NY 245463666v10
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Kia Motors America, Inc.
`Petitioner,
`
`v.
`
`Signal IP, Inc.
`Patent Owner.
`
`Patent No. 6,012,007
`Issued: January 4, 2000
`Filed: June 3, 1997
`Inventors: Duane Donald Fortune, Robert John Cashler
`Title: OCCUPANT DETECTION METHOD AND APPARATUS FOR AIR
`BAG SYSTEMS
`
`
`
`Inter Partes Review No. ________
`
`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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`NY 245463666v10
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Kia Motors America, Inc. (“Petitioner”) 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 KMA Petition”) filed contemporaneously herewith. Pursuant to 35
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`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner 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 ʼ007 Patent”). Petitioner’s request for joinder is timely under 37
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`C.F.R. §§ 42.22 and 42.122(b) as it submitted no later than one month after the
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`October 1, 2015 institution date of the Honda IPR. The KMA Petition is also
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`narrowly tailored to the same claims, prior art, and grounds for unpatentability that
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`are the subject of the Honda IPR. In addition, Petitioner is willing to streamline
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`discovery and briefing. Petitioner submits that joinder is appropriate because it
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`will not unduly burden or prejudice the parties to the Honda IPR while efficiently
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`resolving the question of the ʼ007 Patent’s validity in a single proceeding.
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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
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`for the Eastern District Michigan, on October 4, 2014; Ford Motor Company, Case
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`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; Ford Motor Company, Case No. 2-14-cv-03106, in the U.S. District Court
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`for the Central District of California, on April 23, 2014; Fiat U.S.A., Inc. et al.,
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`Case No. 2-14-cv-03105, in the U.S. District Court for the Central District of
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`California, on April 23, 2014; Volkswagen Group of America, Inc. d/b/a Audi of
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`America, Inc. et al., Case No. 2-14-cv-03113, in the U.S. District Court for the
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`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; Volvo Cars of North America, LLC, Case
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`No. 2-14-cv-03107, in the U.S. District Court for the Central District of California,
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`on April 23, 2014; BMW of North America, LLC et al., Case No. 2-14-cv-03111,
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`in the U.S. District Court for the Central District of California, on April 23, 2014;
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`Mercedes-Benz USA, LLC et al., Case No. 2-14-cv-03109, in the U.S. District
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`Court for the Central District of California, on April 23, 2014; Nissan North
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`America, Inc., Case No. 2-14-cv-02962, in the U.S. District Court for the Central
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`District of California, on April 17, 2014; Subaru of America, Inc., Case No. 2-14-
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`cv-02963, in the U.S. District Court for the Central District of California, on April
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`14, 2014; Suzuki Motor America, Inc., Case No. 8-14-cv-00607, in the U.S.
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`District Court for the Central District of California, on April 17, 2014; Kia Motors
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`America, Inc., Case No. 2-14-cv-02457, in the U.S. District Court for the Central
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`District of California, on April 1, 2014; American Honda Motor Co., Inc. et al.,
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`Case No. 2-14-cv-02454, in the U.S. District Court for the Central District of
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`California, on April 1, 2014; Mazda Motor of America, Inc., Case No. 8-14-cv-
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`00491, in the U.S. District Court for the Central District of California, on April 1,
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`2014; Mazda Motor of America, Inc., Case No. 8-14-cv-00491, in the U.S. District
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`Court for the Central District of California, on April 1, 2014; Mazda Motor of
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`America, Inc., Case No. 2-14-cv-02459, in the U.S. District Court for the Central
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`District of California, on April 1, 2014; Mitsubishi Motors North America, Inc.,
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`Case No. 8-14-cv-00497, 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. 2-
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`14-cv-02462, in the U.S. District Court for the Central District of California, on
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`April 1, 2014; Hyundai Motor America, Case No. 8:15-cv-01085, in the U.S.
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`District Court for the Central District of California, on July 8, 2015; and Toyota
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`North America, Inc. et al., Case No. 2:15-cv-05162, in the U.S. District Court for
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`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 ʼ007 Patent.
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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 ʼ007 Patent. The proposed grounds in the KMA 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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`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
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`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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`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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`B. Petitioner’s Motion for Joinder is Timely
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`This Motion for Joinder is timely because it is filed within one month of the
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`October 1, 2015 institution decision of the Honda IPR. See 37 C.F.R. § 42.122(b).
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`Further, the one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply to the
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`KMA Petition because this Motion for Joinder is filed concurrently with the KMA
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`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 KMA 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 Petitioner will accept an “understudy” role. See
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`IPR2015-01353, Decision Instituting IPR Review, Motion for Joinder, paper 11at
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`6; (granting IPR where petitioners requested an “understudy” role); see also
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`IPR2015-01353, Motion for Joinder, paper 4 at 5-7. Lastly, the briefing and
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`discovery will be simplified by resolving all issues in a single proceeding.
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`Accordingly, joinder is appropriate here. See IPR2015-01353, Decision Instituting
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`IPR Review, Motion for Joinder, paper 11 at 5-6 (granting institution of IPR and
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`motion for joinder where petitioners relied “on the same prior art, same arguments,
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`and same evidence, including the same expert and a substantively identical
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`declaration.”); see also IPR2015-01353, Motion for Joinder, paper 4 at 4-5.
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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 KMA 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 KMA Petition relies solely on
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`grounds from the Honda Petition that the Board instituted on October 1, 2015. The
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`KMA Petition is substantively identical to the Honda Petition, containing only
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`minor differences related to formalities of a different party filing the petition.
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`Other than these mere differences related to formalities, there are no changes to the
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`facts, citations, evidence, or arguments presented in the Honda Petition. Because
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`these proceedings are substantively identical, good cause exists for joining this
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`proceeding with the Honda IPR so that the Board can efficiently resolve all
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`grounds in both the KMA and Honda Petitions in a single proceeding. Id.
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`2. Petitioner Proposes No New Grounds of Unpatentability
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`The KMA Petition does not present any new grounds of unpatentability.
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`The KMA Petition is substantively identical to the Honda Petition, except that it
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`only includes grounds the Board instituted. The KMA Petition presents the
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`unpatentability of the same claims of the same patent in the same way as the
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`Honda Petition.
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`3. Joinder Will Not Unduly Burden or Negatively Impact the Honda
` IPR Trial Schedule
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`Because the KMA Petition is substantively identical to the Honda Petition,
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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
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`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
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`Owner beyond that already required in [the original IPR].”); see also IPR2015-
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`01353, Motion for Joinder, paper 4 at 5-7. Without any new issues present, there is
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`no reason to delay or alter the trial schedule already present in the Honda IPR, and
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`Petitioner explicitly consents to the existing trial schedule. Further, the Patent
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`Owner Preliminary Response already filed in the Honda IPR addresses any and all
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`issues in the KMA Petition, since the issues are substantively identical to the issues
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`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
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`the KMA 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
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`Honda Petition. Id. Also, because the KMA Petition relies on the same expert and
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`a substantively identical declaration, only a single deposition is needed for the
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`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
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`small adjustment of the trial schedule was necessary, this is already provided for in
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`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 KMA Petition with the Honda
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`IPR.
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`4. Procedures to Simplify Briefing and Discovery
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`The Honda Petition and KMA 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
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`by the Board:
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`(a) all filings by [Petitioner] in the joined proceeding be consolidated with
`[the filings of the petitioner in the Honda IPR], unless a filing solely
`concerns issues that do not involve [the petitioner in the Honda IPR]; (b)
`[Petitioner] shall not be permitted to raise any new grounds not already
`instituted by the Board in the [Honda IPR], or introduce any argument or
`discovery not already introduced by [the petitioner in the Honda IPR]; (c)
`[Petitioner] shall be bound by any agreement between [Patent Owner] and
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`[the petitioner in the Honda IPR] concerning discovery and/or depositions;
`and (d) [Petitioner] at deposition shall not receive any direct, cross
`examination or redirect time beyond that permitted for [the petitioner in the
`Honda IPR] alone under either 37 C.F.R. § 42.53 or any agreement between
`[Patent Owner] and [the petitioner in the Honda IPR].
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`See IPR2014-00550, paper 38 at 5 (Apr. 10, 2015). Petitioner 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
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`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 IPR2015-01353,
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`Motion for Joinder, paper 4 at 6-7.
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`IV. CONCLUSION
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`Based on the factors discussed above, Petitioner respectfully requests that
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`the Board grant the KMA Petition for Inter Partes Review of U.S. Patent No.
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`6,012,007 and then grant joinder with the American Honda Motor Co., Inc. v.
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`Signal IP, Inc., IPR2015-01004 proceeding.
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`
`/s/ Heath J. Briggs
`Heath J. Briggs (Reg. No. 54,919)
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Telephone: (303) 572-6500
`Fax: (303) 572-6540
`Email: briggsh@gtlaw.com
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`Patrick J. McCarthy (Reg. No. 62,762)
`Greenberg Traurig, LLP
`2101 L Street NW, Ste. 1000
`Washington, DC 20037
`Telephone: (202) 331-3100
`Fax: (202) 331-3101
`Email: mccarthyp@gtlaw.com
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`Attorneys for Petitioner KIA MOTORS
`AMERICA, INC.
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`Respectfully submitted,
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`Dated: October 30, 2015
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`NY 245463666v10
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