UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Nissan North America, Inc. and Nissan Motor Co., Ltd.,
`Petitioners
`
`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.: IPR2016-01560
`
`
`
`PETITIONERS’ 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
`
`
`
`
`
`Nissan North America, Inc. and Nissan Motor Co., Ltd.,
`Petitioners
`
`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.: IPR2016-01560
`
`
`
`PETITIONERS’ MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND ............................................................................................ 2
`II.
`III. LEGAL STANDARD .................................................................................... 4
`IV. ANALYSIS ..................................................................................................... 5
`A.
`This Joinder Motion is Timely ............................................................. 5
`B.
`Joinder is Appropriate .......................................................................... 6
`C.
`Consolidated Filings and Discovery .................................................... 7
`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
`PROPOSED ORDER ................................................................................... 10
`V.
`VI. CONCLUSION ............................................................................................. 11
`
`
`
`-i-
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`
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`
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`
`
`I.
`
`INTRODUCTION
`
`Petitioners move the Patent Trial and Appeal Board (“Board”) for joinder
`
`this inter partes review (Case No. IPR2016-1560, “Nissan IPR”) to an earlier inter
`
`partes review filed by Toyota Motor Corporation (Case No. IPR2016-0418,
`
`“Toyota IPR”). The Nissan 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 Nissan IPR and Toyota IPR rely upon the same analytical framework
`
`(e.g., same expert declarant, prior art, claim charts, and claim constructions) in
`
`addressing the Challenged Claims. Accordingly, resolving the Nissan IPR and
`
`Toyota IPR will necessarily involve considering the same issues by all parties and
`
`the Board.
`
`Petitioners are 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, which Toyota
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`
`
`
`
`
`
`does not oppose. Joinder should also provide for case management efficiencies
`
`for the Board.
`
`In light of the similarities of the proceedings and the efficiencies that can be
`
`realized via joinder, Petitioners respectfully request that the Board join the Toyota
`
`IPR and Nissan 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 Nissan IPR involve different petitioner groups and real
`
`parties-in-interest. Compare Toyota IPR, Paper 1 at 1with Nissan IPR, Paper 1 at 1
`
`(identifying real parties-in-interest). However, all such 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; Nissan IPR, Paper 1 at 1-2 (listing
`
`related matters). The other Patent Owner Patent is U.S. Patent No. 7,489,786, for
`
`which there are several other pending IPR proceedings. A summary of the IPR
`
`proceedings related to the Patent Owner’s Patents is provided below in Tables 1
`
`and 2.
`
`
`
`
`
`2
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`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
`
`IPR2016-01533 08/05/2016 Honda
`
`‘786
`
`’342
`
`’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,
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`
`
`
`
`
`
`
`
`
`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
`49-57, 62-64, 66,
`68, 70, 71, 73-80,
`94, 95, 97, 99-103,
`106, 109- 111, 113,
`115, and 120
`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
`
`Case
`IPR2016-00118
`IPR2016-00419
`IPR2016-00418
`
`Table 2: Status of Related Proceedings
`
`Status
`Institution denied
`Institution denied
`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
`
`
`
`4
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`
`
`
`
`
`
`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
`
`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
`Petitioners respectfully request 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.
`
`
`
`5
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`
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`
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`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,
`
`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 Nissan 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 Nissan 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. The same expert declarant is used, and the
`
`expert’s declarations in the two cases are substantively identical. Further, unity of
`
`exhibits and exhibit numbering (particularly with respect to prior art) with the
`
`
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`6
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`
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`
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`Toyota IPR have also been maintained, with only minor exceptions.1 Accordingly,
`
`resolving the Nissan 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 Petitioners,
`
`the Patent Owner, and the Board. On the other hand, if the Nissan IPR 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 Nissan IPRs are the same, Petitioners agree to
`
`work closely with Toyota to avoid redundancies wherever possible.
`
`For example, Petitioners 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, Petitioners will agree to:
`
`1 Exhibit 1022 (the Non-Institution Decision in IPR2016-00118) and Exhibit 1023
`
`(the Institution Decision in the Toyota IPR, upon which Petitioners’ instant IPR is
`
`based) have been added to the petition. Otherwise, all exhibits are the same.
`
`
`
`7
`
`
`
`
`
`
`
`•
`
`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.
`
`Petitioners will also agree to consolidated discovery. This is appropriate
`
`given that Petitioners and Toyota are using the same expert declarant who has
`
`submitted a substantively identical declaration in the two proceedings.
`
`Additionally, Petitioners will agree to designate a single attorney to conduct, on
`
`behalf of Petitioners and Toyota, the cross-examination of any witness produced
`
`by Patent Owner and the redirect of any witness produced by Petitioners and
`
`Patent Owner, and to limit such cross-examinations and redirect to the time
`
`normally allotted for one party. Petitioners and Toyota will not receive any
`
`separate cross-examination or redirect time.
`
`D. No New Grounds of Unpatentability
`The Nissan 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 Nissan 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,
`
`
`
`8
`
`
`
`
`
`
`
`and Petitioners have 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
`
`Petitioners, 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, because Petitioners and Toyota
`
`have agreed to cooperate, joinder will also reduce by half the time and expense for
`
`depositions and other discovery that would otherwise accompany separate IPR
`
`proceedings. As such, joinder will simplify briefing and discovery, without any
`
`foreseeable prejudice to Patent Owner.
`
`V.
`
`PROPOSED ORDER
`
`In light of the benefits of joinder described above, Petitioners propose an
`
`order joining the Nissan IPR with the Toyota IPR consistent with the following,
`
`which Toyota does not oppose:
`
`•
`
`If inter partes review is instituted on any ground in the Nissan IPR,
`
`the Nissan IPR will be joined to the Toyota IPR;
`
`•
`
`The scheduling order entered for the Toyota IPR will apply to the
`
`
`
`9
`
`
`
`
`
`
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`joined proceedings;
`
`•
`
`Throughout the joined proceedings, Petitioners and Toyota will file
`
`papers as consolidated filings, except for motions that do not involve the other
`
`party, in accordance with the Board’s established rules regarding page limits. So
`
`long as they both continue to participate in the merged proceedings, Petitioners and
`
`Toyota will identify each such filing as a Consolidated Filing and will be
`
`responsible for completing all consolidated filings;
`
`•
`
`Petitioners and Toyota will designate an attorney to conduct the cross
`
`examination of any witness produced by Patent Owner and the redirect of any
`
`given witness produced by Petitioners and Toyota within the timeframe normally
`
`allotted by the rules for one party. Petitioners and Toyota will not receive any
`
`separate cross-examination or redirect time; and
`
`Patent Owner will conduct any cross examination of any given witness
`
`jointly produced by Petitioners and Toyota and the redirect of any given witness
`
`produced by Patent Owner within the timeframe normally allotted by the rules for
`
`one cross-examination or redirect examination.
`
`VI. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request 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
`
`
`
`10
`
`
`
`
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`
`
`IPR and Nissan IPR.
`
`
`
`Dated: August 8, 2016
`
`Respectfully Submitted,
`
` /s/ Sean N. Hsu
`Sean N. Hsu
`Reg. No. 69,477
`Hartline Dacus Barger Dreyer LLP
`8750 N. Central Expwy., Suite 1600
`Dallas, TX 75231
`shsu@hdbdlaw.com,
`Phone: 214-346-3765
`Fax: 214-267-4265
`
`Lead Counsel for Petitioners
`
`Jeffrey S. Patterson
`(pro hac vice to be filed with
`authorization)
`Hartline Dacus Barger Dreyer LLP
`8750 N. Central Expwy., Suite 1600
`Dallas, TX 75231
`jpatterson@hdbdlaw.com,
`Phone: 214-346-3701
`Fax: 214-267-4201
`
`Backup Counsel for Petitioners
`
`
`
`
`11
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`
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`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a copy of the foregoing Motion for Joinder
`was served on August 8, 2016, upon the following parties via Express 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
`
`Respectfully submitted,
`/s/ Sean N. Hsu
`Sean N. Hsu
`Reg. No. 69,477
`Hartline Dacus Barger Dreyer LLP
`8750 N. Central Expwy., Suite 1600
`Dallas, TX 75231
`shsu@hdbdlaw.com,
`Phone: 214-346-3765
`Fax: 214-267-4265
`
`
`12
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`
`
`
`Date: August 8, 2016
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