UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`American Honda Motor Co., Inc.
`
`v.
`
`Blitzsafe Texas, LLC,
`Patent Owner
`
`U.S. Patent No. 8,155,342
`Filing Date: June 27, 2006
`Issue Date: April 10, 2012
`Title: Multimedia Device Integration System
`
`
`
`Inter Partes Review No.: IPR2016-01533
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`American Honda Motor Co., Inc.
`
`v.
`
`Blitzsafe Texas, LLC,
`Patent Owner
`
`U.S. Patent No. 8,155,342
`Filing Date: June 27, 2006
`Issue Date: April 10, 2012
`Title: Multimedia Device Integration System
`
`
`
`Inter Partes Review No.: IPR2016-01533
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ......................... 1
`I.
`BACKGROUND ............................................................................................ 2
`II.
`III. LEGAL STANDARD .................................................................................... 5
`IV. ANALYSIS ..................................................................................................... 6
`A.
`This Joinder Motion is Timely ............................................................. 6
`B.
`Joinder is Appropriate .......................................................................... 7
`C.
`Consolidated Filings and Discovery .................................................... 8
`D. No New Grounds of Unpatentability ................................................... 9
`E.
`No Impact on IPR Trial Schedule ........................................................ 9
`F.
`Joinder Will Streamline the Proceedings and Result in No
`Prejudice to Patent Owner .................................................................... 9
`G. Discovery and Briefing Can Be Simplified ....................................... 10
`CONCLUSION ............................................................................................. 11
`
`V.
`
`
`
`
`
`-i-
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`
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`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Petitioner moves the Patent Trial and Appeal Board (“Board”) for joinder of
`
`this inter partes review (Case No. IPR2016-01533, “Honda IPR”) to an earlier
`
`inter partes review filed by Toyota Motor Corporation (“Toyota”) (Case No.
`
`IPR2016-0418, “Toyota IPR”). The Honda IPR is intentionally identical to the
`
`Toyota IPR in all substantive aspects. Both seek inter partes review of claims 49-
`
`57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103, 106, 109- 111, 113, 115, and
`
`120 (the “Challenged Claims”) of U.S. Patent No. 8,155,342 (Ex. 1001, “the ’342
`
`patent”). Further, the Honda IPR and Toyota IPR rely upon the same analytical
`
`framework (e.g., same expert declarant, prior art, and claim charts) in addressing
`
`the Challenged Claims. Accordingly, resolving the Honda IPR and Toyota IPR
`
`will necessarily involve considering the same issues by all parties and the Board.
`
`Petitioner is filing this petition and joinder motion to ensure that the
`
`instituted trial is completed in the event that the petitioner in the Toyota IPR
`
`reaches a settlement with the Patent Owner. Joinder of these proceedings also
`
`presents the best opportunity to secure the just, speedy, and inexpensive resolution
`
`of the related proceedings without any prejudice to the Patent Owner. This
`
`includes consolidated filings and discovery and eliminating the duplicate hearings
`
`and briefing that would surely accompany separate proceedings. Joinder should
`
`also provide for case management efficiencies for the Board.
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`
`
`
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`
`
`Petitioner has notified counsel for Toyota and Blitzsafe Texas, LLC
`
`(“Blitzsafe”) regarding the subject of this motion. Counsel for Blitzafe has
`
`indicated that they oppose this motion. As of the filing of this motion, counsel for
`
`Toyota indicated that Toyota is still considering whether or not it is opposed to the
`
`motion.
`
`In light of the similarities of the proceedings and the efficiencies that can be
`
`realized via joinder, Petitioner respectfully requests that the Board join the Toyota
`
`IPR and Honda IPR.
`
`II. BACKGROUND
`Toyota filed a petition requesting inter partes review of the ’342 patent on
`
`December 30, 2015. Toyota IPR, Paper 1. A decision granting institution of that
`
`petition was granted on July 8, 2016. Paper 13.
`
`The Toyota IPR and Honda IPR involve different petitioner groups and real
`
`parties-in-interest. Compare Toyota IPR, Paper 1 at 1 with Honda IPR, Paper 1 at 1
`
`(identifying real parties-in-interest). However, the parties are defendants in
`
`numerous different infringement lawsuits asserting the ’342 patent and one other
`
`patent filed by the Patent Owner in the U.S. District Court for the Eastern District
`
`of Texas. See Toyota IPR, Paper 1 at 1-2; Honda IPR, Paper 1 at 1-3 (listing
`
`related matters). The other patent asserted by the Patent Owner is U.S. Patent No.
`
`7,489,786, for which there are several other pending IPR proceedings. A summary
`
`
`
`2
`
`
`
`
`
`
`
`of the IPR proceedings related to the Patent Owner’s Patents is provided below in
`
`Tables 1 and 2.
`
`Table 1: Related Proceedings
`
`Case
`
`Date Filed Petitioner
`
`Patent
`
`IPR2016-00118 10/30/2015 Unified Patents
`
`’342
`
`IPR2016-00418 12/30/2015 Toyota
`
` ’342
`
`IPR2016-00419 12/30/2015 Toyota
`IPR2016-00421 12/30/2015 Toyota
`IPR2016-00422 12/30/2015 Toyota
`IPR2016-01445 07/20/2016 Volkswagen
`IPR2016-01448 07/20/2016 Volkswagen
`IPR2016-01449 07/20/2016 Volkswagen
`
` ’342
`‘786
`‘786
`’342
`‘786
`’342
`
`IPR2016-01472 07/21/2016 Honda
`
`IPR2016-01473 07/21/2016 Honda
`
`‘786
`
`’342
`
`IPR2016-01477 07/21/2016 Hyundai /Kia
`
`‘786
`
`Challenged
`Claims
`1-25, 49, 73, 97,
`120, 121
`
`49-57, 62-64, 66,
`68, 70, 71, 73-80,
`94, 95, 97, 99-103,
`106, 109-
`111,113,115, 120
`49-57, 62-64, 66,
`
`
`
`
`1, 2, 4-8, 10, 13,
`
`
`
`
`
`
`
`
`1, 2, 4-8, 10, 13,
`
`
`
`
`
`
`
`
`
`
`49-57, 62-64, 66,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1, 2, 4-8, 13, 14,
`
`
`
`
`
`
`
`
`
`
`
`
`
`49-57, 62-64, 66,
`
`
`
`
`
`
`68, 70, 71, 73-80,
`
`
`
`
`
`
`94, 95, 97, 99-103,
`106, 109-111, 113,
`115, 120
`1, 5-8, 10, 14, 57,
`60-62, 64, 65
`
`
`
`49, 53, 54, 56, 57,
`62, 66, 70, 73, 77,
`78
`1, 5-8, 10, 14, 23,
`24, 57, 60-62, 64-
`65
`
`
`
`3
`
`
`
`
`
`
`
`
`
`IPR2016-01476 07/21/2016 Hyundai / Kia
`
`’342
`
`49, 50-57, 62-64,
`71, 73, 77-80, 95,
`97, 99-103, 106,
`109-111, 120
`
`Table 2: Status of Related Proceedings1
`
`Case
`IPR2016-00118
`IPR2016-00419
`
`Status
`Institution denied
`Institution denied
`
`
`1 Petitioner, in order to facilitate an identical record to the Toyota IPR proceeding,
`
`uses the same claim constructions that Toyota proffered in its original Petition.
`
`Honda acknowledges that several of these constructions were not adopted by the
`
`Board in its Institution Decision (Paper 13), and further, that the constructions are
`
`different than the constructions proffered by Honda in its other petition for inter
`
`partes review filed for the '342 patent, i.e., IPR-2016-01473. However, in order to
`
`simplify the proceedings and effectuate this motion for joinder, Honda proffers the
`
`same constructions in the Honda IPR that Toyota offered in the Toyota IPR.
`
`
`
`4
`
`
`
`
`
`
`
`IPR2016-00418
`
`Instituted as follows;
`1. Claims 49–55, 57, 62–64, 71, 73–80, 95, and 97, 99–103,
`109–111, and 120 as unpatentable under 35 U.S.C. § 103 over
`Clayton and Berry;
`2. Claims 49–57, 62–64, 66, 70, 71, 73–80, 94, 95, 97, 99–
`103,106, 109–111, 113, and 120 as unpatentable under 35
`U.S.C.§ 103 over Clayton, Berry, and Marlowe; and
`3. Claims 68 and 115 as unpatentable under 35 U.S.C. § 103
`over Clayton, Berry, Marlowe, and Gioscia
`Case pending.
`
`IPR2016-00421
`
`IPR2016-00422
`
`
`
`Instituted for claims 44 and 47 of the ’786 patent on the
`ground of obviousness over JP ’954, Lau, and Bhogal
`Case pending.
`Institution denied
`
`III. LEGAL STANDARD
`When more than one petition for inter partes review of the same patent is
`
`properly filed and those petitions warrant institution, the Board has the authority
`
`and discretion to join the proceedings. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
`
`Joinder of one inter partes review with another inter partes review is appropriate
`
`where it secures the just, speedy, and inexpensive resolution of the inter partes
`
`review proceedings. See 37 C.F.R. § 42.1(b).
`
`A petitioner may request joinder, without prior authorization, up to one
`
`month after the institution date of the proceeding to which joinder is requested. 37
`
`C.F.R. § 42.122(b) (addressing timing to request joinder); Taiwan Semiconductor
`
`Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and IPR2014-782, Paper 5 at 3 (May
`
`
`
`5
`
`
`
`
`
`
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`29, 2014) (prior authorization not required before one month deadline). Typically,
`
`such a joinder request: (1) sets forth the reasons why joinder is appropriate; (2)
`
`identifies any new grounds of unpatentability asserted in the petition; and (3)
`
`explains what impact (if any) joinder would have on the trial schedule for the
`
`existing review. See, e.g., Microsoft Corp. v. IPR Licensing, Inc., IPR2015-00074,
`
`Paper 21 at 4 (Mar. 4, 2015). A joinder request can additionally address
`
`specifically how briefing and discovery may be simplified. See, e.g., Sony Corp. of
`
`Am. v. Network-1 Security Solutions, Inc., IPR2013-00495, Paper 13 at 3 (Sep. 16,
`
`2013); Fujitsu Semiconductor Ltd. v. Zond, LLC, IPR2014-00845, Paper 14 at 304
`
`(Oct. 2, 2014). Petitioner addresses each of these points below.
`
`IV. ANALYSIS
`Petitioner respectfully requests that the Board grant this motion for joinder
`
`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) and enter an order
`
`consistent with the proposed order provided below.
`
`A. This Joinder Motion is Timely
`This motion is timely. Under 37 C.F.R. § 42.122(b), joinder can be
`
`requested without prior authorization no later than one month after the institution
`
`date of the proceeding to which joinder is requested. Taiwan Semiconductor,
`
`IPR2014-00781 and IPR2014-782, Paper 5 at 3. Because this motion is being
`
`filed within one month of the Board’s decision instituting trial in the Toyota IPR,
`
`
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`6
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`
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`
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`it meets the requirements of § 42.122(b). See, e.g., Biotronik, Inc. v. Atlas IP
`
`LLC, IPR2015-00534, Paper 10 (Feb. 25, 2015) (granting motion for joinder filed
`
`concurrently with institution of IPR review).
`
`Joinder is Appropriate
`
`B.
`Joinder of the Toyota IPR and the Honda IPR is the most practical way to
`
`secure the just, speedy, and inexpensive resolution of these related proceedings.
`
`See 37 C.F.R. § 42.1(b). The petition in the Honda IPR is intentionally identical to
`
`the petition in the Toyota IPR in all substantive aspects. That is, the same claims
`
`are challenged (49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103, 106, 109-
`
`111, 113, 115, and 120 of the ’342 patent) based on the same prior art, same claim
`
`charts, and same claim constructions (as determined by the Panel in the Toyota
`
`IPR). The same expert declarant is used, and the expert’s declarations in the two
`
`cases are identical. Further, unity of exhibits and exhibit numbering (particularly
`
`with respect to prior art) with the Toyota IPR has also been maintained.
`
`Accordingly, resolving the Honda IPR and Toyota IPR will necessarily involve
`
`considering the same issues and same papers. Joining these inter partes reviews
`
`thus presents an opportunity to streamline review of the ’342 patent’s Challenged
`
`Claims and eliminate unnecessary duplication of filings, papers, and efforts of the
`
`Petitioner, the Patent Owner, and the Board. On the other hand, if the Honda IPR
`
`
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`7
`
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`
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`
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`and Toyota IPR proceed separately, there would undoubtedly be needless duplicate
`
`effort.
`
`C. Consolidated Filings and Discovery
`To further ensure a streamlined process, and because the grounds of
`
`unpatentability in the Toyota and Honda IPRs are the same, Petitioner agrees to
`
`work closely with Toyota to avoid redundancies wherever possible.
`
`For example, Petitioner will agree to consolidated filings for all substantive
`
`papers in the proceeding (e.g., Reply to the Patent Owner’s Response, Opposition
`
`to Motion to Amend, Motion for Observation on Cross Examination Testimony of
`
`a Reply Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude
`
`Evidence, and Reply). Specifically, so as to avoid lengthy and duplicative
`
`briefing, Petitioner will agree to:
`
`•
`
`incorporate their filings with those of Toyota in a consolidated filing,
`
`subject to the ordinary rules for one party on page limits;
`
`•
`
`•
`
`be jointly responsible with Toyota for the consolidated filings; and
`
`not be permitted to make arguments separately from those advanced
`
`by Petitioner and Toyota in the consolidated filings.
`
`Petitioner will also agree to consolidated discovery. This is appropriate
`
`given that Petitioner is not using a different expert declarant than Toyota.
`
`Additionally, Petitioner will agree to a single attorney to conduct, on behalf of
`
`
`
`8
`
`
`
`
`
`
`
`Petitioner and Toyota, the cross-examination of any witness produced by Patent
`
`Owner and the redirect of any witness produced by Petitioner and Patent Owner,
`
`and to limit such cross-examinations and redirect to the time normally allotted for
`
`one party.
`
`D. No New Grounds of Unpatentability
`The Honda IPR raises no new grounds of unpatentability from those raised
`
`in the Toyota IPR. This is because, as noted above, the petitions in the Toyota IPR
`
`and Honda IPR are substantively identical.
`
`E. No Impact on IPR Trial Schedule
`This motion is being filed within one month of institution of the Toyota IPR,
`
`and Petitioner has agreed to adhere to all applicable deadlines set forth in the
`
`Toyota IPR Scheduling Order. Accordingly, the trial schedule for the Toyota IPR
`
`should not be adversely affected.
`
`F.
`
`Joinder Will Streamline the Proceedings and Result in No
`Prejudice to Patent Owner
`
`Joinder will streamline the proceedings and reduce the costs and burden on
`
`Petitioner, Patent Owner, and the Board. Joining these proceedings will eliminate
`
`duplicate papers that must be filed, reviewed, and managed in each proceeding if
`
`the proceedings are not joined. Joinder will therefore also create case management
`
`efficiencies for the Board and all parties. Further, joinder will also reduce by half
`
`the time and expense for depositions and other discovery that would otherwise
`
`
`
`9
`
`
`
`
`
`
`
`accompany separate IPR proceedings. As such, joinder will simplify briefing and
`
`discovery, without any foreseeable prejudice to Patent Owner.
`
`G. Discovery and Briefing Can Be Simplified
`Given the Honda IPR is identical to the Toyota IPR with respect to grounds
`
`of unpatentability raised in that petition and instituted by the Board, the Board may
`
`adopt procedures similar to those used in related cases to simplify briefing and
`
`discovery during trial. See e.g., Hyundai Motor Co. v. Am. Vehicular Sciences
`
`LLC, IPR2014-01543, Paper No. 11 at 5 (Oct. 24, 2014); Dell Inc. v. Network-1
`
`Solutions, Inc., IPR2013-00385, Paper No. 17 at 8-10 (Jul. 29, 2013); Motorola
`
`Mobility LLC, IPR2013-00256, Paper 10 at 8-10 (Apr. 29, 2013). Specifically, the
`
`Board may order Petitioner to consolidate filings, or limit separate filings, if any,
`
`directed only to points of disagreement with Toyota (Honda does not anticipate
`
`any), with the understanding that it will not be permitted any separate arguments in
`
`furtherance of those advanced in the Toyota’s consolidated filings. See e.g.,
`
`Hyundai, IPR2014-01543, Paper No. 11 at 5. Further, no additional depositions
`
`will be needed and depositions will be completed within ordinary time limits. Id.
`
`Moreover, to the extent that Petitioner does participate in the proceedings,
`
`Petitioner will coordinate with the Toyota to consolidate filings, manage
`
`questioning at depositions, manage presentations at the hearing, ensure that
`
`briefing and discovery occur within the time normally allotted, and avoid
`
`
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`10
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`
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`redundancies. Petitioner is willing to take a “backseat” role to Toyota, in which it
`
`would not file any separate papers without consultation with Toyota and prior
`
`authorization from the Board. These procedures should simplify briefing and
`
`discovery.
`
`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests institution of Inter
`
`Partes Review of claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103,
`
`106, 109-111, 113, 115, and 120 of the ’342 patent and grant joinder of the Toyota
`
`IPR and Honda IPR.
`
`11
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`
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`Dated: August 5, 2016
`
`Respectfully Submitted,
`
`/Joseph Melnik/
`Joseph Melnik
`Registration No. 48,741
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, California 94303
`Telephone: (650) 739-3939
`Facsimile: (650) 739-3939
`
`Lead Counsel for Petitioner
`
`Joseph M. Beauchamp
`Reg. No. 46,544
`jbeauchamp@jonesday.com
`JONES DAY
`717 Texas Avenue, Suite 3300
`Houston, Texas 77002
`Telephone: (832) 239-3939
`Facsimile: (832) 239-3600
`
`Backup Counsel for Petitioner
`
`H. Albert Liou
`Reg. No. 71,504
`aliou@jonesday.com
`JONES DAY
`717 Texas Avenue, Suite 3300
`Houston, Texas 77002
`Telephone: (832) 239-3939
`Facsimile: (832) 239-3600
`
`Backup Counsel for Petitioner
`
`
`
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`12
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion for
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`Joinder was served on August 5, 2016, upon the following parties via UPS
`
`overnight delivery:
`
`Ira M. Marlowe
`BLITZSAFE OF AMERICA, INC.
`33 Honeck Street
`Englewood, NJ 07631
`
`Courtesy Copies to:
`
`Peter Lambrianakos
`Brown Rudnick LLP
`Seven Times Square
`New York, NY 10036
`plambrianakos@brownrudnick.com
`
`
`Date: August 5, 2016
`
`
`
`
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`Respectfully submitted,
`
`/Joseph Melnik /
`Joseph Melnik
`Registration No. 48,741
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, California 94303
`
`13
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