`IPR of U.S. Patent No. 7,237,634
`
`Filed on behalf of Petitioners
`By:
`Joseph J. Richetti
`Kevin E. Paganini
`Bryan Cave LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 541-2000
`Fax: (212) 541-4630
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HYUNDAI MOTOR AMERICA, INC., HYUNDAI MOTOR COMPANY,
`KIA MOTORS CORPORATION & KIA MOTORS AMERICA, INC.
`Petitioners
`
`v.
`
`PAICE LLC &
`ABELL FOUNDATION, INC.
`Patent Owners
`
`Case: To Be Assigned
`U.S. Patent No. 7,237,634
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO INTER PARTES REVIEW OF IPR2015-00785
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`
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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED .............................1
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`STATEMENT OF MATERIAL FACTS....................................................2
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`III.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED..................3
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`A.
`
`B.
`
`C.
`
`Legal Standard.......................................................................................3
`
`Petitioners’ Motion for Joinder is Timely.............................................4
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`Each Factor Weighs in Favor of Joinder...............................................4
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`1.
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`2.
`
`3.
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`Joinder is Appropriate and Petitioners Present No New
`Grounds.......................................................................................5
`
`Joinder Will Not Negatively Impact the Ford IPR Trial
`Schedule......................................................................................6
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`Procedures to Simplify Briefing and Discovery.........................7
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`D.
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`Joinder Will Not Prejudice the Parties to the Ford IPR ........................8
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`IV. CONCLUSION................................................................................................9
`
`i
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`IPR of U.S. Patent No. 7,237,634
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`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Hyundai Motor America, Inc., Hyundai Motor Company, Kia Motors Cor-
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`poration and Kia Motors America, Inc. (“Petitioners”) respectfully submit this Mo-
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`tion for Joinder, together with a petition (the “Hyundai-Kia Petition”) for Inter
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`Partes Review of U.S. Patent No. 7,237,634 (the “’634 patent”) filed contempora-
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`neously herewith. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Peti-
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`tioners request institution of an inter partes review and joinder with inter partes
`
`review in Ford Motor Co. v. Paice LLC, et al., IPR2015-00785 (the “Ford IPR”),
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`which was instituted on October 26, 2015 and concerns the same ‘634 patent. Peti-
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`tioners timely filed the Hyundai-Kia Petition and this motion within one month of
`
`the institution of the Ford IPR. 37 C.F.R. § 42.122(b).
`
`Joinder will efficiently resolve the challenges to the ‘634 patent in the Ford
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`IPR, and will neither impact the substantive issues or schedule in that proceeding,
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`nor prejudice the parties. Intentionally, the Hyundai-Kia Petition is narrowly tai-
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`lored to the same grounds of unpatentability on which the Ford IPR was instituted,
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`and relies on the same claims, prior art, arguments and evidence presented in
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`Ford’s petition. Indeed, in an effort to avoid multiplication of issues before the
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`Board, the Petition is nearly word-for-word identical to the challenges that are pre-
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`sented on the instituted grounds in the Ford IPR and it relies on the same support-
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`ing expert declaration. In addition, Petitioners explicitly agree to consolidated dis-
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`covery and briefing as described below, and are willing to accept a limited role al-
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`lowing Ford’s counsel to act as the lead counsel as long as Ford remains in the
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`proceeding. Accordingly, Petitioners submit that joinder is appropriate because it
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`will not prejudice the parties or impact the substantive issues and schedule in the
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`Ford IPR, while efficiently resolving in a single proceeding the question of the
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`‘634 patent’s validity based on the instituted grounds of the Ford IPR.
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`II.
`
`STATEMENT OF MATERIAL FACTS
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`1. The ‘634 patent is entitled “Hybrid Vehicles” and lists Alex J. Sever-
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`insky and Theodore Louckes as inventors. The ‘634 patent issued on July 3, 2007.
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`Paice LLC and The Abell Foundation, Inc. (the “Patent Owners”) are believed to
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`be co-owners to all right, title, and interest in ‘634 patent.
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`2. On February 16, 2012, Patent Owners filed a civil action asserting the
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`‘634 patent, along with other patents, against Hyundai Motor America, Inc., Hyun-
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`dai Motor Company, Kia Motors Corporation and Kia Motors America, Inc. in
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`Civil Action No. 1:12-cv-00499. A jury trial was completed on October 1, 2015 in
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`this action, and the parties are currently engaged in post-trial briefing.
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`3. On February 19, 2014, Patent Owners filed a civil action asserting the
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`‘634 patent, along with other patents, against Ford Motor Company (“Ford”) in
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`Civil Action No. 1:14-cv-00492.
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`4. On February 22, 2015, Ford filed a petition for inter partes review re-
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`2
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`Case To Be Assigned
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`questing cancellation of claims 80, 91, 92, 97, 99, 107, 108, 110, 112, 114, 125,
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`126, 130, 132, 140, 141, 143, 145, 241, 252–254, 256–263 and 265 of the ‘634 pa-
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`tent (the “Ford Petition”), which was subsequently assigned Case No. IPR2015-
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`00785.
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`5. On October 26, 2015, the Board instituted inter partes review in Case
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`No. IPR2015-00785 finding that a reasonable likelihood existed that the Ford Peti-
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`tion would prevail in showing the unpatentability of claims 80, 91, 92, 97, 107,
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`108, 110, 112, 114, 125, 126, 130, 140, 141, 143, 145, 241, 252–254, 256–263,
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`and 265 of the ‘634 patent.
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`III.
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`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). Any request for joinder must be filed no later than one month af-
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`ter the institution date of any inter partes review for which joinder is requested.
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`See 37 C.F.R. § 42.122(b).
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`In deciding whether to exercise its discretion, the
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`Board considers factors including: (1) the reasons why joinder is appropriate; (2)
`
`whether the new petition presents any new grounds of unpatentability; (3) what
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`impact, if any, joinder would have on the trial schedule for the existing review; and
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`(4) how briefing and discovery may be simplified. See Macronix Int’l Co. v. Span-
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`sion, IPR2014-00898, paper 13, at 4 (PTAB Aug. 13, 2014) (citing Kyocera Cor-
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`poration v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24, 2013));
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`Perfect World Entertainment, Inc. v. Uniloc USA, Inc., et al., IPR2015-01026, pa-
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`per 10 at 4 (PTAB Aug. 3, 2015); Mylan Pharmaceuticals Inc. v. Novartis AG, et
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`al., IPR2015-00265, paper 17 at 4 (PTAB April 10, 2015).
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`B. Petitioners’ 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 26, 2015 institution decision in the Ford IPR. See 37 C.F.R. § 42.122(b).
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`The one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply when a petition
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`is filed concurrently with a motion for joinder, as is currently the case here with the
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`Hyundai-Kia Petition. Id.
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`C. Each Factor Weighs in Favor of Joinder
`
`Each of the four factors to be considered by the Board in ruling on this mo-
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`tion weighs in favor of joinder. As explained in further detail below, joinder is
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`proper because the Hyundai-Kia Petition does not present any new grounds of un-
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`patentability, is substantively identical to the Ford Petition with respect to the insti-
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`tuted grounds, will have minimal impact, if any, on the trial schedule, briefing and
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`discovery in the Ford IPR, and allows all issues to be resolved in a single proceed-
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`ing before the Board. Petitioners further agree to taken on a very limited role in
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`the proceeding, and will assume an active role only in the event that Ford settles
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`with the Patent Owners or otherwise ceases to participate in the Ford IPR.
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`1. Joinder is Appropriate and Petitioners Present No New
`Grounds
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`Joinder with the Ford IPR is appropriate because the Hyundai-Kia Petition
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`involves the same patent, challenges the same claims, relies on the same expert
`
`declaration, and is based on the same grounds, arguments and prior art submitted in
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`the Ford Petition.1 The Hyundai-Kia Petition does not raise any new grounds of
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`unpatentability. Further, the Hyundai-Kia Petition relies solely on grounds from
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`the Ford Petition on which the Board instituted review on October 26, 2015, and is
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`substantively identical to corresponding portions of the Ford Petition pertaining to
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`the instituted grounds. Indeed, the challenges presented in the Hyundai-Kia Peti-
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`tion are largely copied verbatim from the Ford Petition and rely on the same sup-
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`porting expert declaration. The primary differences between the Hyundai-Kia Peti-
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`tion and the Ford Petition relate to the removal of challenges for non-instituted
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`grounds, minor formalities associated with the parties involved with filing the peti-
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`tions and references to related proceedings. The Hyundai-Kia Petition presents the
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`same arguments, evidence and citations presented in the Ford Petition; it does not
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`add to or alter any argument that has already been considered by the Board, nor
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`1 The Hyundai-Kia Petition is submitted with the same Exhibits as the ones submit-
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`ted with the Ford Petition.
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`does it seek to expand the grounds of unpatentability that the Board has already in-
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`stituted. Accordingly, because these proceedings are substantively identical, join-
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`ing this proceeding with the Ford IPR is appropriate and allows the Board to effi-
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`ciently resolve the instituted grounds in a single proceeding.
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`2. Joinder Will Not Negatively Impact the Ford IPR Trial
`Schedule
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`35 U.S.C. § 316(a)(11) provides that “the final determination in an inter
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`partes review be issued not later than one year after the date on which the Director
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`notices the institution of a review.” See also 37 C.F.R. § 42.100(c). Joinder in this
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`case will not impact this mandate and will not even require modification of the ex-
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`isting scheduling order. See, IPR2015-00785, Paper 12. As explained above, the
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`Hyundai-Kia Petition is substantively identical with respect
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`to the instituted
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`grounds contained in the Ford Petition. Thus, the Preliminary Response already
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`filed in the Ford IPR addresses any and all issues in the Hyundai-Kia Petition. See
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`IPR2015-00785, papers 9 and 10. Furthermore, there are no new issues for the Pa-
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`tent Owners to address and the Patent Owners will not be required file additional
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`responses or arguments. Consequently, the Patent Owner Response will also not
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`be impacted; joining Petitioners to this proceeding will not require any additional
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`analysis by Patent Owners beyond what they will already undertake to respond to
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`the Ford Petition. Also, since the Hyundai-Kia Petition relies on the same expert
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`declaration, only a single deposition is needed for the proposed joined proceeding
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`in connection with both the Ford Petition and the Hyundai-Kia Petition. For effi-
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`ciency’s sake, if joined, Petitioners further agree to consolidated discovery and to
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`allow Ford’s counsel to act as the lead counsel so long as Ford remains in the pro-
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`ceeding. Petitioners are further prepared to waive any right that may be granted to
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`them by the Board to file separate reply papers or briefs while Ford remains in the
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`IPR proceeding if the Board determines that such rights could negatively impact
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`the IPR schedule.
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`For at least the reasons set forth above, there is no reason to delay or alter
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`the schedule already present in the Ford IPR, and Petitioners explicitly consent to
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`this schedule. Accordingly, joinder of these proceedings will not negatively im-
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`pact the Ford IPR trial schedule.
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`3. Procedures to Simplify Briefing and Discovery
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`As discussed above, Petitioners offer no new grounds for invalidity and Peti-
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`tioners do not anticipate that
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`their presence will
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`introduce any additional
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`arguments, briefing or need for discovery. As long as Ford remains an active
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`participant in the IPR, Petitioners are willing to accept a limited role and agree to:
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`(1) consolidate filings with Ford; (2) refrain from raising any new grounds not al-
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`ready instituted by the Board in the Ford IPR; (3) be bound by any agreement be-
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`tween Patent Owners and Ford concerning discovery and/or depositions; (4) limit
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`any direct, cross-examination or redirect time beyond that permitted for Ford alone
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`under either 37 C.F.R. § 42.53 or any agreement between Ford and the Patent
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`Owners, such that Petitioners’ participation in the Ford IPR does not result in any
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`additional time being required for any deposition; (5) forego filing separate reply
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`papers or briefs unless the Board sua sponte grants Petitioners such rights; and (6)
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`waive any right to present argument at oral hearing unless authorized by the Board
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`and agreed to by the parties. By accepting this limited role, both the Board and
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`parties will be able to comply with the existing schedule in the Ford IPR and avoid
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`any duplication of efforts. The Board has consistently granted joinder motions al-
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`lowing Petitioners to take a similar (and in some cases a more active) role than that
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`proposed by Petitioners in this proceeding.2 Accordingly, Petitioners request that
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`the Board grant Petitioners’ motion for joinder, particularly in light of the forego-
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`ing procedural safeguards and limited role that Petitioners are willing to accept in
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`this proceeding.
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`D. Joinder Will Not Prejudice the Parties to the Ford IPR
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`Permitting joinder will not prejudice Ford or Patent Owners. It is Petition-
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`ers’ understanding that Ford does not intend to oppose this joinder motion. Also,
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`2 See, e.g., Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-01376, paper 12
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`at 16-20 (PTAB Sept. 29, 2015); Ciena Corp., et al. v. Capella Photonics, Inc.,
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`IPR2015-00894, paper 12 (PTAB Sept. 22, 2015); Dell Inc. v. Network-1 Security
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`Solutions, Inc., IPR2013-00385, paper 17 (PTAB July 29, 2013).
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`Patent Owners are not prejudiced as all of the issues raised by Petitioners are al-
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`ready before the Board and known to Patent Owners. Further, Patent Owners are
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`not expected to incur any additional burden as a result of this joinder. This is par-
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`ticularly true in light of the limited role that Petitioners propose to undertake in the
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`Ford IPR.
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`Joinder will allow the Board to address the same patent validity
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`questions in a single proceeding within a statutory deadline without adding costs or
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`burdens on any of the parties.
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`IV. CONCLUSION
`Based on the factors outlined above, Petitioners request the Board grant the
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`Petition for Inter Partes Review of U.S. Patent No. 7,237,634 and then grant join-
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`der with the Ford Motor Co. v. Paice LLC, et al., IPR2015-00785 proceeding.
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`Date: November 25, 2015
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`Kevin Paganini (Reg. No. 66,286)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com,
`kevin.paganini@bryancave.com
`
`Attorneys for Petitioners – Hyundai Motor Amer-
`ica, Inc., Hyundai Motor Company, Kia Motors
`Corporation & Kia Motors America, Inc.
`
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`IPR of U.S. Patent No. 7,237,634
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned “MOTION FOR
`
`JOINDER UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`TO INTER PARTES REVIEW OF IPR2015-00785” was served in its entirety on
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`November 25, 2015, upon the following parties via FedEx:
`
`Attorney of Record for U.S. Patent No. 7,237,634:
`
`Mr. Michael de Angeli
`34 Court Street
`Jamestown, RI 02835
`
`Attorneys for Petitioner in IPR2015-00785:
`
`Frank A. Angileri
`Marc Lorelli
`Andrew B. Turner
`John P. Rondini
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`Lissi Mojica
`Kevin Greenleaf
`DENTONS US LLP
`233 South Wacker Drive
`Suite 7800
`Chicago, IL 60606-6306
`
`Attorneys for Patent Owners in IPR2015-00785:
`
`Timothy W. Riffe
`Kevin E. Greene
`Ruffin B. Cordell
`Linda L. Kordziel
`Brian J. Livedalen
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
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`Date: November 25, 2015
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`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`Lead Attorney for Patent Owner
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioners – Hyundai Motor
`America, Inc., Hyundai Motor Company,
`Kia Motors Corporation & Kia Motors
`America, Inc.
`
`11