`Patent No. 7,067,952
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`NIDEC CORPORATION AND AMERICAN HONDA MOTOR CO., INC.,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`________________
`
`Case No. IPR2018-00597
`Patent No. 7,067,952
`
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`AND STATEMENT OF CONSENT TO JOINDER WITH IPR -
`
`
`
`Case No. IPR2018-00597
`Patent No. 7,067,952
`
`Patent Owner Intellectual Ventures II LLC (“IV”) submits this Preliminary
`
`Response to the Petition to institute an inter partes review of U.S. Patent No.
`
`7,067,952 (“the ’952 Patent”). As explained below, IV consents to institution of
`
`this IPR and to the joinder of Nidec Corporation (“Nidec”) and American Honda
`
`Motor Co., Inc. (“Honda”) (collectively “Petitioners”) as petitioners to
`
`IPR2017-01497.
`
`On February 15, 2018, Petitioners concurrently filed this Petition and a
`
`motion for joinder (Paper 4) with instituted proceeding IPR2017-01497. In their
`
`motion for joinder, Petitioners asserted that this “Petition is substantively identical
`
`to the Toyota IPR (Case No. IPR2017-01497) . . . and . . . propose[s] the same
`
`grounds for unpatentability that were presented, and instituted on, in the Toyota
`
`IPR, based on the same prior art.” Paper 4 at 1. Further, Petitioners agreed “to take
`
`an ‘understudy’ role in the joined proceeding, absent termination of the original
`
`petitioners,” and listed limitations on Petitioners’ participation in IPR2017-01497.
`
`Id. at 5–7.
`
`IV maintains its position that IPR2017-01497 should not have been
`
`instituted. See IPR2017-01497 Paper 8. However, because the Board has instituted
`
`IPR2017-01497, IV believes that the institution of this IPR, coupled with the
`
`joinder of Nidec and Honda as petitioners to IPR2017-01497 (subject to the
`
`limitations on Nidec and Honda’s participation set forth in Petitioners’ motion for
`
`1
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`
`
`Case No. IPR2018-00597
`Patent No. 7,067,952
`
`joinder), will best “secure the just, speedy, and inexpensive resolution of every
`
`proceeding.” 37 C.F.R. § 42.1(b). Therefore, in the interest of administrative
`
`efficiency, and without conceding that this Petition meets the statutory threshold
`
`for institution under 35 U.S.C. § 314(a), IV consents to institution of this IPR and
`
`to joinder of Nidec and Honda as petitioners to IPR2017-01497, subject to the
`
`limitations on Nidec and Honda’s participation set forth in Petitioners’ motion for
`
`joinder.
`
`Dated: April 5, 2018
`
`/Brad Scheller/
`Brad M. Scheller (Reg. No. 61,022)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`The Chrysler Center
`666 Third Avenue
`New York, New York 10017
`Telephone: 212-935-3000
`Facsimile: 212-983-3115
`bmscheller@mintz.com
`INTVEN_IPRs@mintz.com
`
`2
`
`
`
`Case No. IPR2018-00597
`Patent No. 7,067,952
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Preliminary Response and Statement
`
`of Consent to Joinder with IPR2017-01497 is being served by electronic mail on
`
`the following counsel of record:
`
`Lead Counsel for Nidec
`
`Back Up Counsel for Nidec
`
`John Flock (Reg. No. 39,670)
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Telephone: (212) 425-7200
`Facsimile: (212) 425-5288
`jflock@andrewskurthkenyon.com
`
`Michael Turner (Reg. No. 60,314)
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Telephone: (212) 425-7200
`Facsimile: (212) 425-5288
`mturner@andrewskurthkenyon.com
`
`Lead Counsel for Honda
`
`Back Up Counsel for Honda
`
`John Caracappa (Reg. No. 43,532)
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036-1795
`Telephone: (202) 429-6267
`Facsimile: (212) 429-3902
`jcaracap@steptoe.com
`
`James R. Nuttall (Reg. No. 44,978)
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Telephone: (312) 577-1260
`Facsimile: (312) 577-1370
`jnuttall@steptoe.com
`
`Li Guo (Reg. No. 67,887)
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036-1795
`Telephone: (202) 429-1322
`Facsimile: (212) 429-3902
`lguo@steptoe.com
`
`Dated April 5, 2018
`
` /Brad Scheller/
`Brad M. Scheller
`
`76803225v.1
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`3
`
`
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