UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________________________
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`Hyundai Motor Company Ltd., Hyundai Motor America, Hyundai Motor
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`Manufacturing Alabama, LLC, Kia Motors Corporation, Kia Motors America, Inc.,
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`and Kia Motors Manufacturing Georgia, Inc.,
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`Petitioners
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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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`Case Number IPR2016-01557
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`__________________________________________________
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________________________
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`Hyundai Motor Company Ltd., Hyundai Motor America, Hyundai Motor
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`Manufacturing Alabama, LLC, Kia Motors Corporation, Kia Motors America, Inc.,
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`and Kia Motors Manufacturing Georgia, Inc.,
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`Petitioners
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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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`Case Number IPR2016-01557
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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 Hyundai Motor Company
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`Ltd., Hyundai Motor America, Hyundai Motor Manufacturing Alabama, LLC,
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`(collectively, “Hyundai”), Kia Motors Corporation, Kia Motors America, Inc., and
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`Kia Motors Manufacturing Georgia, Inc.’s (collectively, “Kia”) (collectively
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`combined, “Petitioners” or “Hyundai/Kia”) motion to join inter partes review
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`(“IPR”) number IPR2016-01557 (“Hyundai/Kia IPR”) to an earlier IPR filed by
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`Toyota Motor Corporation (“Toyota”) IPR2016-00418 (“Toyota IPR”). Joinder
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`should be denied for the 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, Hyundai/Kia bears the burden to show that joinder is
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`appropriate. 37 C.F.R. § 42.20(c). In order to find joinder, the rules state that the
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`Board is to consider the impact of both substantive issues and procedural matters
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`on the proceedings and other discretionary considerations. Joinder should be
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`denied here for both substantive and procedural reasons.
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`Hyundai/Kia filed its joinder Petition more than one year after it had been
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`served with a complaint alleging infringement of U.S. Patent No. 8,155,342 (“the
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`’342 Patent”) and both the Petition and joinder should be denied. Statutory
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`estoppel provisions seek to “protect patent owners from harassment via successive
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`petitions by the same or related parties, to prevent parties from having a ‘second
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`bite at the apple’ and to protect the integrity of both the USPTO and Federal Courts
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`by assuring that all issues are promptly raised and vetted.” 77 FR 48759. Section
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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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`
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`Hyundai/Kia already petitioned the Board on the same patent in IPR2016-
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`01476 (The -01476 Petition”). The -01476 Petition was filed on July 21, 2016 and
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`Hyundai/Kia alleges that it was served with a complaint as early as July 24, 2015.
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`Despite its explicit acknowledgement of its one year bar date, Hyundai/Kia waited
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`until August 08, 2016 to file the instant Petition––several weeks after its bar date
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`had passed. Hyundai and Kia are large companies with extensive resources. There
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`is no reason to employ discretion to save Hyundai/Kia from negligently failing to
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`abide by the rules and Hyundai/Kia’s reckless disregard of the one year window
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`could serve no purpose other than to delay and otherwise mire the proceedings.
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`Moreover, by allowing joinder, Hyundai/Kia will effectively be afforded the
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`opportunity to simultaneously argue two different positions. Hyunda/Kia’s earlier
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`filed -01476 Petition includes some of the same claims and claim construction
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`issues present in the Toyota IPR. By joining this proceeding, Hyunda/Kia will be
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`allowed to argue its case relying on different claim constructions and to potentially
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`benefit from contradictory positions.
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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 8, 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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`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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`
`Paul R. Steadman, Reg. No. 43,932
`DLA Piper LLP (US)
`203 North LaSalle Street, Suite 1900
`Chicago, Illinois 60601-1293
`paul.steadman@dlapiper.com
`Telephone: 312.368.2135
`Facsimile: 312.251.2850
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`September 8, 2016
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` /Peter Lambrianakos/
`
`
`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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`
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`By:
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