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 REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION FOR JOINDER
`
`
`
`
`
`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 REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION FOR JOINDER
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`
`
`
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`INTRODUCTION .......................................................................................... 1
`JOINDER IS PROPER UNDER 37 C.F.R. § 42.122(b) & 35 U.S.C.
`§ 315(b) ........................................................................................................... 1
`III. CONCLUSION ............................................................................................... 3
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`
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`-i-
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`I.
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`INTRODUCTION
`Petitioner has moved for joinder of this inter partes review (Case No.
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`IPR2016-01533, “Honda IPR”) to an earlier inter partes review filed by Toyota
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`Motor Corporation (“Toyota”) (Case No. IPR2016-0418, “Toyota IPR”). The
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`Honda IPR is intentionally identical to the Toyota IPR in all substantive aspects.
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`Ignoring the clear statutory language and the rules of the Board, Blitzsafe Texas
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`LLC (“Patent Owner”) opposed Petitioner’s motion alleging the petition and the
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`request for joinder were untimely.1 Patent Owner’s arguments are misplaced.
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`Under 37 C.F.R. § 42.122(b) and 35 U.S.C. § 315(b)-(c), the Honda IPR was
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`timely filed and Petitioner respectfully requests that the Board join the Toyota IPR
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`and Honda IPR.
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`II.
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`JOINDER IS PROPER UNDER 37 C.F.R. § 42.122(b) & 35 U.S.C. §
`315(b)
`
`Both the relevant statute and the rules of this Board are unambiguously
`
`clear: a petition accompanied by a request for joinder to an earlier instituted
`
`proceeding is timely when filed within one month after the institution date of the
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`earlier proceeding. 37 C.F.R. § 42.122(b) permits joinder to be requested, without
`
`
`1 At the time Honda filed its request for joinder, Toyota had not made a decision of
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`whether or not to oppose Honda’s request. However, Toyota did not file an
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`opposition to Honda’s motion for joinder.
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`
`
`
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`
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`prior authorization, up to one month after the institution date of the proceeding to
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`which joinder is requested. 37 C.F.R. § 42.122(b) (addressing timing to request
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`joinder); Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and
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`IPR2014-782, Paper 5 at 3 (May 29, 2014) (prior authorization not required before
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`one month deadline). In the event joinder is so requested, § 42.122(b) states “The
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`time period set forth in § 42.101(b) shall not apply . . . .”2 The Board’s rules
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`implement the clear statutory scheme set forth by Congress that excepts requests
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`for joinder from the prohibition on filing an IPR petition more than one (1) year
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`after a complaint asserting the patent against the petitioner was served. 35 U.S.C.
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`§ 315(b)-(c). Indeed, 35 U.S.C. § 315(b) provides:
`
`An inter partes review may not be instituted if the petition requesting
`the proceeding is filed more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served
`with a complaint alleging infringement of the patent. The time
`limitation set forth in the preceding sentence shall not apply to a
`request for joinder under subsection (c).
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`35 U.S.C. § 315(b) (emphasis added).
`
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`2 37 CFR §42.101(b) – “A person who is not the owner of a patent may file with
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`the Office a petition to institute an inter partes review of the patent unless . . . [t]he
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`petition requesting the proceeding is filed more than one year after the date on
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`which the petitioner, the petitioner's real party-in-interest, or a privy of the
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`petitioner is served with a complaint alleging infringement of the patent.”
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`2
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`The joinder rules facilitate resolution of issues in a single proceeding which
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`reduces costs on the parties (including the patent owner) and the burden on the
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`Board. Indeed, the rules “shall be construed so as to ensure the just, speedy, and
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`inexpensive resolution of every proceeding” and joinder may serve the “statutory
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`objective of decreasing litigation costs and conserving judicial resources.” Target
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`Corp. v. Destination Maternity Corp., Case IPR2014–00508, Paper 28 at 12-13
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`(Feb. 12, 2015). Further, “[d]uring the Senate’s March 2011 debates on the AIA,
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`Senator Kyl explained that the USPTO expected to allow liberal joinder of
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`reviews.” Id. at 10.
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`Here, Honda is seeking joinder pursuant to § 42.122(b) to the Toyota IPR
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`that was instituted on July 8, 2016. Paper 13. As the Honda IPR and
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`accompanying motion for joinder were filed on August 5, 2016, less than one
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`month after the institution date of the Toyota IPR, the request is timely and falls
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`squarely within the exceptions set forth in § 42.122(b) and 35 U.S.C. 315(b).
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`Accordingly, the Patent Owner’s opposition, which relies solely upon a misreading
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`of the relevant rules and statute, fails to identify any supportable reason why
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`Honda’s request for joinder should not be granted.
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`III. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests institution of Inter
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`Partes Review of claims 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103,
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`3
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`106, 109-111, 113, 115, and 120 of the ’342 patent and joinder of the Honda IPR
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`with the previously filed Toyota IPR.
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`4
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`Dated: October 6, 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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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Motion for
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`Joinder was served on October 6, 2016, upon the following parties via UPS
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`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: October 6, 2016
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`Respectfully submitted,
`
`/Joseph Melnik /
`Joseph Melnik
`Registration No. 48,741
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, California 94303
`
`
`
`6
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