`Trials@uspto.gov
`Entered: August 13, 2018
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JAGUAR LAND ROVER NORTH AMERICA, LLC and JAGUAR LAND
`ROVER LTD.,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01203
`Patent 7,489,786 B2
`____________
`DAIMLER AG,
`Petitioner,
`v.
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01211
`Case IPR2018-01214
`Patent 7,489,786 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
`
`
`
`IPR2018-01203
`IPR2018-01211
`IPR2018-01214
`Patent 7,489,786 B2
`
`
`I. BACKGROUND
`The panel conducted a conference call with the parties in the above-
`captioned proceedings to discuss the petitions filed in each proceeding. In
`particular, the panel noted that for the claim construction statements, each
`Petition cites exhibits from district court litigation papers and those cites
`appeared to be improper incorporation by reference under 37 C.F.R.
`§ 42.6 (a)(3). The panel noted that each petition was close to the limit of
`14,000 words and spanned more than 80 pages each. The panel also noted
`that numbering of claim limitations, used as a shorthand throughout the
`Petition, was confusing and difficult to follow, particularly because indexes
`of claim limitations for over 30 challenged claims were not included in the
`petition. Counsel for each of the parties was present and, at Patent Owner’s
`request and expense, a court reporter transcribed the call.
`After discussion with the parties regarding the perceived problems
`with each of the petitions, the panel issued the following,
`Instructions:
`(1) Refiling of Corrected Petitions to correct these deficiencies will be
`allowed, where the corrections are non-substantive and address
`only the issues discussed in the claim construction section of the
`petitions.
`(2) To the extent citations are used to incorporate arguments that are
`not present in the petition, those citations are to be eliminated.
`Citations to supporting testimony or other evidence may be used.
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`IPR2018-01203
`IPR2018-01211
`IPR2018-01214
`Patent 7,489,786 B2
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`(3) Material that is re-purposed from the argument section to the claim
`construction section must not include any substantive edits,
`whether by rephrasing, summarizing, or otherwise.
`(4) In accordance with representations of counsel, further corrections
`involve “moving” content from one section to another section of
`the petition, deleting material, or editing citations to refer to the
`patent-at-issue instead of referring to a document filed in district
`court.
`(5) Petitioner must re-certify the word count with an actual word
`count, which does not need to include numerals. Scientific
`certainty is not needed, and the panel expects a reasonable and
`good faith effort should be sufficient.
`
`II. RE-FILING CONCERNS AND PROCESS
`The panel authorized the filing of Corrected Petitions over Patent
`Owner’s objections. Patent Owner expressed the concern that the re-filing
`would be unfair because Petitioners filed deficient petitions at the very end
`of the one-year period allowable under 35 U.S.C. § 315(b). Patent Owner
`argued that if the Petitions at-issue do not comply with Board rules,
`Petitioner should not be allowed an opportunity to cure the noted
`deficiencies.
`The panel acknowledges Patent Owner’s objections. They are
`overruled. The cases are in a very early stage of the preliminary phase. One
`of these proceedings has no notice of filing accorded, while the notices of
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`IPR2018-01203
`IPR2018-01211
`IPR2018-01214
`Patent 7,489,786 B2
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`filing accorded in two of these cases were recently issued. Further Patent
`Owner did not express any actual prejudice. Recognizing the potential of
`Petitioners being time-barred, the panel declined the approach of “form over
`substance,” especially in consideration of Petitioners counsel assertions that
`the citations to exhibits were not intended to incorporate by reference those
`exhibits and the confusion could be remedied without substantive changes to
`the petitions or exceeding the word count limits.
`After hearing all parties and giving our instructions, as outlined above,
`we issued a deadline for the re-filing of Corrected Petitions: August 17.
`Petitioners are to exchange with Patent Owner a version of the Corrected
`Petitions showing “tracked changes” in redline form indicating changes from
`the original Petitions. Patent Owner may contact the Board if upon review
`of the changes Patent Owner believes an extension of time to file the
`Preliminary Response is necessary. Based on Patent Owner’s request during
`the call, no deadlines have been adjusted to account for the correction of the
`Petitions. The stay of all deadlines and filings that we had previously issued
`pending resolution of these matters, therefore, is lifted.
`The panel advised the parties to exercise reasonableness in
`discharging our instructions and to meet and confer before contacting the
`Board with any dispute arising from our ruling.
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`IPR2018-01203
`IPR2018-01211
`IPR2018-01214
`Patent 7,489,786 B2
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`III. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner in each captioned proceeding is authorized
`to file a Corrected Petition pursuant to the Instructions set forth above;
`FURTHER ORDERED that the deadline to file each Corrected
`Petition is August 17;
`FURTHER ORDERED that Patent Owner file the transcript of the
`call as an Exhibit in each proceeding; and
`FURTHER ORDERED that each Petitioner is to provide redline
`versions of the filed Corrected Petition in each proceeding with Patent
`Owner.
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`IPR2018-01203
`IPR2018-01211
`IPR2018-01214
`Patent 7,489,786 B2
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`PETITIONER IPR2018-01203
`Matthew Moore
`Jon Strang
`Clement Naples
`Lisa Nguyen
`LATHAM & WATKINS LLP
`matthew.moore@lw.com
`jonathan.strang@lw.com
`clement.naples@lw.com
`lisa.nguyen@lw.com
`
`PETITIONER IPR2018-01211 and -1214
`Jim Glass
`Sean Gloth
`Richard Lowry
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`gloths@pepperlaw.com
`richardlowry@quinnemanuel.com
`
`PATENT OWNER:
`Peter Lambrianakos
`Alfred R. Fabricant
`Vincent J. Rubino, III
`Enrique W. Iturralde
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`afabricant@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
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