Paper: 6
`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
`
`
`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.
`
`2
`
`
`
`IPR2018-01203
`IPR2018-01211
`IPR2018-01214
`Patent 7,489,786 B2
`
`
`(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
`
`3
`
`
`
`IPR2018-01203
`IPR2018-01211
`IPR2018-01214
`Patent 7,489,786 B2
`
`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.
`
`4
`
`
`
`IPR2018-01203
`IPR2018-01211
`IPR2018-01214
`Patent 7,489,786 B2
`
`
`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.
`
`
`5
`
`
`
`IPR2018-01203
`IPR2018-01211
`IPR2018-01214
`Patent 7,489,786 B2
`
`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
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
