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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________________________
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`American Honda Motor Co., Inc.,
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`Petitioner
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`v.
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`Blitzsafe Texas, LLC,
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`Patent Owner
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`U.S. Patent Number 8,155,342
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`__________________________________________________
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`I. Introduction.
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`Blitzsafe Texas LLC (“Patent Owner”) opposes American Honda Motor Co.,
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`Inc.’s (“Petitioner”) motion to join inter partes review (“IPR”) number IPR2016-
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`01533 (“Honda IPR”) to an earlier IPR filed by Toyota Motor Corporation
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`(“Toyota”) IPR2016-00418 (“Toyota IPR”). Joinder should be denied for the
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`following reasons.
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`II. Joinder would violate statutory estoppel provisions under 35 U.S.C. §§
`315(b), 316(a)(11) and the Board should use its discretion to deny the
`motion for joinder
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`As the movant, Honda bears the burden to show that joinder is appropriate.
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`37 C.F.R. § 42.20(c). In order to find joinder, the rules state that the Board is to
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`consider the impact of both substantive issues and procedural matters on the
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`proceedings and other discretionary considerations. Joinder should be denied here
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`for both substantive and procedural reasons.
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`Honda filed its joinder Petition more than one year after it had been served
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`with a complaint alleging infringement of U.S. Patent No. 8,155,342 (“the ’342
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`Patent”) and both the Petition and joinder should be denied. Statutory estoppel
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`provisions seek to “protect patent owners from harassment via successive petitions
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`by the same or related parties, to prevent parties from having a ‘second bite at the
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`apple’ and to protect the integrity of both the USPTO and Federal Courts by
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`assuring that all issues are promptly raised and vetted.” 77 FR 48759. Section
`1
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`315(b) bars institution “if the petition requesting the proceeding is filed more than
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`1 year after the date on which the petitioner, real party in interest, or privy of the
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`petitioner is served with a complaint alleging infringement of the patent.” This
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`Petition was filed outside of the one year bar window and accordingly, only
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`discretion of the Board can save the Petition.
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`Honda already petitioned the Board on the same patent in IPR2016-01473
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`(The -01473 Petition”). The -01473 Petition was filed on July 21, 2016 and Honda
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`alleges that it was served with a complaint as early as July 22, 2015. Despite its
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`explicit acknowledgement of its one year bar date, Honda waited until August 05,
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`2016 to file the instant Petition––several weeks after its bar date had passed.
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`Honda is a large company with extensive resources. There is no reason to employ
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`discretion to save Honda from negligently failing to abide by the rules and Honda’s
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`reckless disregard of the one year window could serve no purpose other than to
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`delay and otherwise mire the proceedings.
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`Moreover, by allowing joinder, Honda will effectively be afforded the
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`opportunity to simultaneously argue two different positions. Honda’s earlier filed -
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`01473 Petition includes some of the same prior art at issue in the Toyota IPR. By
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`joining this proceeding, Honda will be allowed to argue its case relying on
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`different positions related to some of the same prior art references and to
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`potentially benefit from contradictory positions.
`2
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`Accordingly, the Petition should be denied institution based on the statutory
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`bar and the motion for joinder should not allow Petitioner to circumvent the rules
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`put in place to prevent conflicting findings and waste of judicial resources.
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`III. Conclusion
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`For the reasons stated above, the motion for joinder should be denied.
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`Dated September 7, 2016
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`Respectfully submitted,
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`/Peter Lambrianakos/
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
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`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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`3
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`09/07/16 DRAFT: Privileged & Confidential
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) & 42.105(b)
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`A copy of PATENT OWNER’S OPPOSITION TO MOTION FOR
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`JOINDER has been served on Petitioner at the correspondence of the Petitioner as
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`follows:
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` /Peter Lambrianakos/
`
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
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`Joseph Melnik
`Reg. No. 48,741
`jmelnik@jonesday.com
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, California 94303
`Telephone: (650) 739-3939
`Facsimile: (650) 739-3939
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`September 7, 2016
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`By:
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