Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 12
`Entered: December 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SUBARU OF AMERICA, INC., MAZDA MOTOR OF AMERICA, INC.,
`VOLVO CARS OF NORTH AMERICA, LLC,
` MITSUBISHI ELECTRIC CORPORATION,
`MITSUBISHI MOTORS CORPORATION, DAIMLER AG, and
`BMW OF NORTH AMERICA, LLC.,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-00090
`Patent 8,155,342 B2
`
`____________
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 12
`Entered: December 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SUBARU OF AMERICA, INC., MAZDA MOTOR OF AMERICA, INC.,
`VOLVO CARS OF NORTH AMERICA, LLC,
` MITSUBISHI ELECTRIC CORPORATION,
`MITSUBISHI MOTORS CORPORATION, DAIMLER AG, and
`BMW OF NORTH AMERICA, LLC.,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-00090
`Patent 8,155,342 B2
`
`____________
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00090
`Patent 8,155,342 B2
`
`
`
`Petitioner, as captioned, requested authorization to file a motion to expedite
`
`
`
`the current proceeding to proceed immediately to institution of trial and then
`
`immediately thereafter to render a final written decision in light of a previous inter
`
`partes review, IPR2016-00418 (“Toyota IPR”), which was terminated on
`
`March 10, 2017, after all parties settled and after oral argument. Judges Jameson
`
`Lee, Thomas Giannetti, and Miriam Quinn presided over the conference call with
`
`Petitioner and Patent Owner’s lead counsel to hear the parties’ positions
`
`concerning Petitioner’s request. After hearing the arguments from both parties, we
`
`denied Petitioner’s request.
`
`The denial of Petitioner’s request is based on three reasons. First,
`
`Petitioner’s request would have dispensed with Patent Owner’s option of filing a
`
`Preliminary Response under 35 U.S.C. § 313. Petitioner’s motion seeks to
`
`expedite the current proceeding by urging the Board to institute trial based only on
`
`the filed Petition, without Patent Owner’s input, and to proceed immediately to
`
`render a final written decision based on the record developed in the Toyota IPR.
`
`Petitioner represents that its Petition is substantively identical to the petition filed
`
`in the Toyota IPR, a position with which we do not agree since Petitioner here
`
`adopts a different claim interpretation position. But even if the petitions were
`
`substantively identical, that fact is insufficient reason to deprive Patent Owner of a
`
`statutory right to respond. Indeed, the asserted similarity of the petitions is
`
`irrelevant. Patent Owner indicated that it would file a Preliminary Response here,
`
`and would consider whether to file supporting testimonial evidence therewith, a
`
`filing that was not available under the Board rules in force at the relevant time
`
`during the Toyota IPR. Because Patent Owner does not agree to forgo the option
`
`of filing a Preliminary Response in this case, we are not persuaded that Petitioner’s
`
`2
`
`
`
`
`IPR2018-00090
`Patent 8,155,342 B2
`
`
`proposed motion to expedite would have any probability of success, and thus, we
`
`
`
`denied the request at the conclusion of the call.
`
`Second, Petitioner’s request is premature. Although Petitioner asserts that
`
`the petition here raises no new issues and that Patent Owner would not be
`
`responding to anything new, the panel is not convinced of Petitioner’s assumption
`
`that institution of trial will ensue on all grounds and on all claims included in the
`
`Toyota IPR, and further on the same reasoning. The petition here will be reviewed
`
`anew, in light of claim constructions not considered when the Toyota IPR was
`
`instituted, and after consideration of any argument and evidence raised by Patent
`
`Owner in the Preliminary Response, which may differ from the information
`
`presented in the Toyota IPR.
`
`Finally, we are not persuaded that the goal of promoting the just, speedy,
`
`and inexpensive resolution of the dispute weighs in favor of granting, at this time,
`
`authorization to file such a motion to expedite. Petitioner focuses its arguments
`
`primarily on the “speedy” and “inexpensive” resolution of the dispute by
`
`immediately acceding to the posture of the Toyota IPR of rendering the final
`
`written decision. Even assuming that there would be efficiencies that may be
`
`gained by Petitioner’s proposal, we consider that fairness and due process are
`
`paramount in our exercise of authority to manage the cases efficiently. Patent
`
`Owner opposes Petitioner’s request to expedite and seeks to take advantage of, or
`
`at least consider exercising, the statutory rights of filing a Preliminary Response, a
`
`Patent Owner Response, and a Motion to Amend, where the burden of persuasion
`
`has been clarified recently to rest with Petitioner. With regard to the goal of a
`
`“just” resolution, we are thus persuaded that Petitioner’s motion to expedite, as
`
`proposed, would run afoul of Patent Owner’s statutory rights, and considerations of
`
`fairness and due process.
`
`3
`
`
`
`
`IPR2018-00090
`Patent 8,155,342 B2
`
`
`
`We finally note, that the notion of expediting the resolution of the issues
`
`
`
`presented by Petitioner is not foreclosed entirely. Therefore, this decision denying
`
`Petitioner’s request is without prejudice. If we institute trial in this case, and after
`
`Patent Owner has exercised its right to choose whether to file a Motion to Amend,
`
`and its right to choose whether to file a Patent Owner Response, Petitioner is
`
`authorized to renew its request to file a motion to expedite.
`
`ORDER
`
`Having heard the parties during a conference call on December 1, 2017, on
`
`the matter of Petitioner’s request for authorization to file a motion to expedite this
`
`proceeding to issue a final written decision, Petitioner’s request is denied.
`
`4
`
`
`
`
`IPR2018-00090
`Patent 8,155,342 B2
`
`PETITIONER:
`
`Matthew D. Satchwell (Lead Counsel)
`matthew.satchwell@dlapiper.com
`
`Paul Steadman
`Paul.steadman@dlapiper.com
`
`Evan Finkel
`Evan.finkel@pillsburylaw.com
`
`Tim Rawson
`Tim.rawson@pillsburylaw.com
`
`Lynde Herzbach
`Lynde.herzbach@bskb.com
`
`Jim Glass
`jimglass@quinnemanuel.com
`
`Brett Watkins
`brettwatkins@quinnemanuel.com
`
`Lionel Lavenue
`Lionel.lavenue@finnegan.com
`
`Kai Rajan
`Kai.rajan@finnegan.com
`
`Charles Gorenstein
`cg@bskb.com
`
`
`PATENT OWNER:
`
`Peter Lambrianakos (Lead Counsel)
`plambrianakos@brownrudnick.com
`
`
`
`
`
`
`
`5
`
`
`
`
`
`
`
`
`IPR2018-00090
`Patent 8,155,342 B2
`
`Vincent Rubino
`vrubino@brownrudnick.com
`
`Enrique Iturralde
`eiturralde@brownrudnick.com
`
`
`
`6
`
`
`
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