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Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`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. 8,214,097
`
`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 IPR2015-00792
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED .............................1
`
`STATEMENT OF MATERIAL FACTS....................................................2
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED..................3
`
`A.
`
`B.
`
`C.
`
`Legal Standard.......................................................................................3
`
`Petitioners’ Motion for Joinder is Timely.............................................4
`
`Each Factor Weighs in Favor of Joinder...............................................4
`
`1.
`
`2.
`
`3.
`
`Joinder is Appropriate and Petitioners Present No New
`Grounds.......................................................................................5
`
`Joinder Will Not Negatively Impact the Ford IPR Trial
`Schedule......................................................................................6
`
`Procedures to Simplify Briefing and Discovery.........................7
`
`D.
`
`Joinder Will Not Prejudice the Parties to the Ford IPR ........................8
`
`IV. CONCLUSION................................................................................................9
`
`i
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Hyundai Motor America, Inc., Hyundai Motor Company, Kia Motors Cor-
`
`poration and Kia Motors America, Inc. (“Petitioners”) respectfully submit this Mo-
`
`tion for Joinder, together with a petition (the “Hyundai-Kia Petition”) for Inter
`
`Partes Review of U.S. Patent No. 8,214,097 (the “’097 patent”) filed contempora-
`
`neously herewith. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Peti-
`
`tioners request institution of an inter partes review and joinder with inter partes
`
`review in Ford Motor Co. v. Paice LLC, et al., IPR2015-00792 (the “Ford IPR”),
`
`which was instituted on October 26, 2015 and concerns the same ‘097 patent. Peti-
`
`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 ‘097 patent in the Ford
`
`IPR, and will neither impact the substantive issues or schedule in that proceeding,
`
`nor prejudice the parties. Intentionally, the Hyundai-Kia Petition is narrowly tai-
`
`lored to the same grounds of unpatentability on which the Ford IPR was instituted,
`
`and relies on the same claims, prior art, arguments and evidence presented in
`
`Ford’s petition.
`
`Indeed, in an effort to avoid multiplication of issues before the
`
`Board, the Petition is nearly word-for-word identical to the challenges that are pre-
`
`sented on the instituted grounds in the Ford IPR and it relies on the same support-
`
`ing expert declaration. In addition, Petitioners explicitly agree to consolidated dis-
`
`1
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`covery and briefing as described below, and are willing to accept a limited role al-
`
`lowing Ford’s counsel to act as the lead counsel as long as Ford remains in the
`
`proceeding. Accordingly, Petitioners submit that joinder is appropriate because it
`
`will not prejudice the parties or impact the substantive issues and schedule in the
`
`Ford IPR, while efficiently resolving in a single proceeding the question of the
`
`‘097 patent’s validity based on the instituted grounds of the Ford IPR.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1. The ‘097 patent is entitled “Hybrid Vehicles” and lists Alex J. Sever-
`
`insky and Theodore Louckes as inventors. The ‘097 patent issued on July 3, 2012.
`
`Paice LLC and The Abell Foundation, Inc. (the “Patent Owners”) are believed to
`
`be co-owners to all right, title, and interest in ‘097 patent.
`
`2. On February 16, 2012, Patent Owners filed a civil action asserting
`
`certain patents against Hyundai Motor America, Inc., Hyundai Motor Company,
`
`Kia Motors Corporation and Kia Motors America, Inc. in Civil Action No. 1-12-
`
`cv-00499. The ‘097 patent was asserted against these parties in a second amended
`
`complaint dated December 17, 2013 in this action. A jury trial was completed on
`
`October 1, 2015 in this action, and the parties are currently engaged in post-trial
`
`briefing.
`
`3. On February 19, 2014, Patent Owners filed a civil action asserting the
`
`‘097 patent, along with other patents, against Ford Motor Company (“Ford”) in
`
`2
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`Civil Action No. 1-14-cv-00492.
`
`4. On February 22, 2015, Ford filed a petition for inter partes review re-
`
`questing cancellation of claims 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, 21, 23, 24, 27, 28,
`
`30, 32, 33, 37, and 38 of the ‘097 patent (the “Ford Petition”), which was subse-
`
`quently assigned Case No. IPR2015-00792.
`
`5. On October 26, 2015, the Board instituted inter partes review in Case
`
`No. IPR2015-00792, finding that a reasonable likelihood existed that the Ford Peti-
`
`tion would prevail in showing the unpatentability of all challenged claims of the
`
`‘097 patent.
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
`
`inter partes review petition to an instituted inter partes review proceeding. See 35
`
`U.S.C. § 315(c). Any request for joinder must be filed no later than one month af-
`
`ter the institution date of any inter partes review for which joinder is requested.
`
`See 37 C.F.R. § 42.122(b).
`
`In deciding whether to exercise its discretion, the
`
`Board considers factors including: (1) the reasons why joinder is appropriate; (2)
`
`whether the new petition presents any new grounds of unpatentability; (3) what
`
`impact, if any, joinder would have on the trial schedule for the existing review; and
`
`(4) how briefing and discovery may be simplified. See Macronix Int’l Co. v. Span-
`
`3
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`sion, IPR2014-00898, paper 13, at 4 (PTAB Aug. 13, 2014) (citing Kyocera Cor-
`
`poration v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24, 2013));
`
`Perfect World Entertainment, Inc. v. Uniloc USA, Inc., et al., IPR2015-01026, pa-
`
`per 10 at 4 (PTAB Aug. 3, 2015); Mylan Pharmaceuticals Inc. v. Novartis AG, et
`
`al., IPR2015-00265, paper 17 at 4 (PTAB April 10, 2015).
`
`B. Petitioners’ Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
`
`October 26, 2015 institution decision in the Ford IPR. See 37 C.F.R. § 42.122(b).
`
`The one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply when a petition
`
`is filed concurrently with a motion for joinder, as is currently the case here with the
`
`Hyundai-Kia Petition. Id.
`
`C. Each Factor Weighs in Favor of Joinder
`
`Each of the four factors to be considered by the Board in ruling on this mo-
`
`tion weighs in favor of joinder. As explained in further detail below, joinder is
`
`proper because the Hyundai-Kia Petition does not present any new grounds of un-
`
`patentability, is substantively identical to the Ford Petition, will have minimal im-
`
`pact, if any, on the trial schedule, briefing and discovery in the Ford IPR, and al-
`
`lows all issues to be resolved in a single proceeding before the Board. Petitioners
`
`further agree to taken on a very limited role in the proceeding, and will assume an
`
`active role only in the event that Ford settles with the Patent Owners or otherwise
`
`4
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`ceases to participate in the Ford IPR.
`
`1. Joinder is Appropriate and Petitioners Present No New
`Grounds
`
`Joinder with the Ford IPR is appropriate because the Hyundai-Kia Petition
`
`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
`
`the Ford Petition.1 The Hyundai-Kia Petition does not raise any new grounds of
`
`unpatentability. Rather, the Hyundai-Kia Petition relies solely on the grounds re-
`
`cited in the Ford Petition which the Board instituted review on October 26, 2015.
`
`The Hyundai-Kia Petition is substantively identical to the Ford Petition; it presents
`
`challenges that are largely copied verbatim from the Ford Petition and relies on the
`
`same supporting expert declaration. The primary differences between the Hyun-
`
`dai-Kia Petition and the Ford Petition relate to minor formalities associated with
`
`the parties involved with filing the petitions and references to related proceedings.
`
`The Hyundai-Kia Petition presents the same arguments, evidence and citations pre-
`
`sented in the Ford Petition; it does not add to or alter any argument that has already
`
`been considered by the Board, nor does it seek to expand the grounds of unpatent-
`
`ability that the Board has already instituted. Accordingly, because these proceed-
`
`1 The Hyundai-Kia petition is submitted with the same Exhibits as the ones submit-
`
`ted with the Ford Petition.
`
`5
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`ings are substantively identical, joining this proceeding with the Ford IPR is ap-
`
`propriate and allows the Board to efficiently resolve the instituted grounds in a sin-
`
`gle proceeding.
`
`2. Joinder Will Not Negatively Impact the Ford IPR Trial
`Schedule
`
`35 U.S.C. § 316(a)(11) provides that “the final determination in an inter
`
`partes review be issued not later than one year after the date on which the Director
`
`notices the institution of a review.” See also 37 C.F.R. § 42.100(c). Joinder in this
`
`case will not impact this mandate and will not even require modification of the ex-
`
`isting scheduling order. See, IPR2015-00792, Paper 14. As explained above, the
`
`Hyundai-Kia Petition is substantively identical with respect
`
`to the instituted
`
`grounds contained in the Ford Petition. Thus, the Preliminary Response already
`
`filed in the Ford IPR addresses any and all issues in the Hyundai-Kia Petition. See
`
`IPR2015-00792, paper 12. Furthermore, there are no new issues for the Patent
`
`Owners to address and the Patent Owners will not be required file additional re-
`
`sponses or arguments. Consequently, the Patent Owner Response will also not be
`
`impacted; joining Petitioners to this proceeding will not require any additional
`
`analysis by Patent Owners beyond what they will already undertake to respond to
`
`the Ford Petition. Also, since the Hyundai-Kia Petition relies on the same expert
`
`declaration, only a single deposition is needed for the proposed joined proceeding
`
`in connection with both the Ford Petition and the Hyundai-Kia Petition. For effi-
`
`6
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`ciency’s sake, if joined, Petitioners further agree to consolidated discovery and to
`
`allow Ford’s counsel to act as the lead counsel so long as Ford remains in the pro-
`
`ceeding. Petitioners are further prepared to waive any right that may be granted to
`
`them by the Board to file separate reply papers or briefs while Ford remains in the
`
`IPR proceeding if the Board determines that such rights could negatively impact
`
`the IPR schedule.
`
`For at least the reasons set forth above, there is no reason to delay or alter
`
`the schedule already present in the Ford IPR, and Petitioners explicitly consent to
`
`this schedule. Accordingly, joinder of these proceedings will not negatively im-
`
`pact the Ford IPR trial schedule.
`
`3. Procedures to Simplify Briefing and Discovery
`
`As discussed above, Petitioners offer no new grounds for invalidity and Peti-
`
`tioners do not anticipate that
`
`their presence will
`
`introduce any additional
`
`arguments, briefing or need for discovery. As long as Ford remains an active
`
`participant in the IPR, Petitioners are willing to accept a limited role and agree to:
`
`(1) consolidate filings with Ford; (2) refrain from raising any new grounds not al-
`
`ready instituted by the Board in the Ford IPR; (3) be bound by any agreement be-
`
`tween Patent Owners and Ford concerning discovery and/or depositions; (4) limit
`
`any direct, cross-examination or redirect time beyond that permitted for Ford alone
`
`under either 37 C.F.R. § 42.53 or any agreement between Ford and the Patent
`
`7
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`Owners, such that Petitioners’ participation in the Ford IPR does not result in any
`
`additional time being required for any deposition; (5) forego filing separate reply
`
`papers or briefs unless the Board sua sponte grants Petitioners such rights; and (6)
`
`waive any right to present argument at oral hearing unless authorized by the Board
`
`and agreed to by the parties. By accepting this limited role, both the Board and
`
`parties will be able to comply with the existing schedule in the Ford IPR and avoid
`
`any duplication of efforts. The Board has consistently granted joinder motions al-
`
`lowing Petitioners to take a similar (and in some cases a more active) role than that
`
`proposed by Petitioners in this proceeding.2 Accordingly, Petitioners request that
`
`the Board grant Petitioners’ motion for joinder, particularly in light of the forego-
`
`ing procedural safeguards and limited role that Petitioners are willing to accept in
`
`this proceeding.
`
`D. Joinder Will Not Prejudice the Parties to the Ford IPR
`
`Permitting joinder will not prejudice Ford or Patent Owners. It is Petition-
`
`ers’ understanding that Ford does not intend to oppose this joinder motion. Also,
`
`Patent Owners are not prejudiced as all of the issues raised by Petitioners are al-
`
`2 See, e.g., Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-01376, paper 12
`
`at 16-20 (PTAB Sept. 29, 2015); Ciena Corp., et al. v. Capella Photonics, Inc.,
`
`IPR2015-00894, paper 12 (PTAB Sept. 22, 2015); Dell Inc. v. Network-1 Security
`
`Solutions, Inc., IPR2013-00385, paper 17 (PTAB July 29, 2013).
`
`8
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`ready before the Board and known to Patent Owners. Further, Patent Owners are
`
`not expected to incur any additional burden as a result of this joinder. This is par-
`
`ticularly true in light of the limited role that Petitioners propose to undertake in the
`
`Ford IPR.
`
`Joinder will allow the Board to address the same patent validity
`
`questions in a single proceeding within a statutory deadline without adding costs or
`
`burdens on any of the parties.
`
`IV. CONCLUSION
`Based on the factors outlined above, Petitioners request the Board grant the
`
`Petition for Inter Partes Review of U.S. Patent No. 8,214,097 and then grant join-
`
`der with the Ford Motor Co. v. Paice LLC, et al., IPR2015-00792 proceeding.
`
`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.
`
`9
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`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 IPR2015-00792” was served in its entirety on
`
`November 25, 2015, upon the following parties via FedEx:
`
`Attorney of Record for U.S. Patent No. 8,214,097:
`
`Mr. Michael de Angeli
`34 Court Street
`Jamestown, RI 02835
`
`Attorneys for Petitioner in IPR2015-00792:
`
`Sangeeta G. Shah
`Frank A. Angileri
`Michael D. Cushion
`Andrew B. Turner
`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 IPR2015-00792:
`
`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
`
`10
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`Date: November 25, 2015
`
`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

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