Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper No. 8
`Date: September 8, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ GROUP AG and MERCEDES-BENZ USA, LLC,
`Petitioner,
`
`v.
`
`ARIGNA TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00776
`Patent 8,289,082 B2
`
`
`Before GARTH D. BAER, SHARON FENICK, and IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`Tel: 571-272-7822
`
`
`
`Paper No. 8
`Date: September 8, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ GROUP AG and MERCEDES-BENZ USA, LLC,
`Petitioner,
`
`v.
`
`ARIGNA TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2022-00776
`Patent 8,289,082 B2
`
`
`Before GARTH D. BAER, SHARON FENICK, and IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Mercedes-Benz Group AG and Mercedes-Benz USA, LLC
`(“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes
`review of claims 1–32 of U.S. Patent No. 8,289,082 B2 (Ex. 1001, “the ’082
`patent”). Concurrently, Petitioner filed a Motion for Joinder seeking to join
`Petitioner as a party to Volkswagen Group of America, Inc. v. Arigna
`Technology Ltd., IPR2021-01531 (PTAB) (“Volkswagen IPR”). Paper 3
`(“Mot.”). Arigna Technology Ltd. (“Patent Owner”) filed a Preliminary
`Response, (Paper 7, “Prelim. Resp.”).
`We have authority under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted unless the
`information presented in the Petition “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” For the reasons described below, we
`institute inter partes review of all the challenged claims, and grant
`Petitioner’s Motion for Joinder.
`
`B. Related Proceedings
`The ’082 patent is at issue in Arigna Technology Limited v.
`Volkswagen AG et al., Case No. 2:21-cv-00173 (E.D. Tex.) (“related district
`court proceeding”) and ITC Proceeding 337-TA-1267 (“ITC proceeding”).
`Pet. 76; Paper 5 (Patent Owner’s Mandatory Notices), 2. The ’082 is also at
`issue in the Volkswagen IPR and in IPR2022-00737 (“the BMW Joinder
`IPR”), in which joinder with the Volkswagen IPR has already been
`requested and granted. Pet. 77; Paper 5, 2; IPR2022-00737, Papers 1
`
`2
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`(Petition, filed March 23, 2022), 3 (Motion for Joinder, filed March 23,
`2022), 9 (granting institution and joinder, issued September 8, 2022).
`
`Asserted Grounds of Unpatentability
`C.
`Petitioner asserts the following grounds of unpatentability.1 Pet. 2.
`
`Soneda, Kozisek3
`
`Reference(s)
`Soneda2
`
`Challenged Claims
`1–6, 11, 13, 14, 16–22, 27,
`29–32
`1–6, 8–11, 13, 14, 16–22, 24–
`27, 29–32
`7, 23
`Soneda, Palmisano4
`Soneda, Kozisek, Palmisano 7, 23
`Soneda, Gutzki5
`12, 15, 28, 31
`Soneda, Kozisek, Gutzki
`12, 15, 28, 31
`
`35 U.S.C. §
`§ 103
`
`§ 103
`
`§ 103
`§ 103
`§ 103
`§ 103
`
`Petitioner also relies on a declaration from Dr. Peter R. Kinget
`(Ex. 1015), whose declaration adopts the opinions set forth in the declaration
`of Laurence W. Nagel, Ph.D. submitted by petitioner in the Volkswagen IPR
`(Ex. 1003). See Pet. 1 n.1. The Petition cites Dr. Nagel’s declaration but
`
`
`1 We note that this chart differs from the chart provided in the Petition. See
`Volkswagen IPR, Paper 7 at 7 nn.3, 7 (explaining the difference between the
`chart provided in the Volkswagen IPR institution decision and the chart in
`the Volkswagen IPR petition).
`2 Soneda, JP 62-171212, published July 28, 1987 (Ex. 1005, original at pp.
`12–15, translation at pp. 2–11, affidavit of translator at p. 1 (see 37 C.F.R.
`§ 42.63(b))).
`3 Kozisek et al., US 6,049,246, issued Apr. 11, 2000 (Ex. 1006).
`4 Palmisano, G., Palumbo, G., & Pennisi, S., CMOS CURRENT AMPLIFIERS
`(1999) (Ex. 1007).
`5 Gutzki et al., US 7,405,614 B2, issued July 29, 2008 (Ex. 1008).
`
`3
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`states that “there are corresponding, identical opinions in Dr. Kinget’s
`declaration.” Id.
`
`II. DISCUSSION
`A. Institution of Inter Partes Review
`1. Discretionary Denial
`In its Preliminary Response, Patent Owner contends we should deny
`the Petition under § 314(a), based on “the combination of the pending EDTX
`Proceeding and nearly completed ITC Proceeding. Prelim. Resp. 68.
`Patent Owner acknowledges (id.) the recent issuance of an Interim
`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with
`Parallel District Court Litigation6 (“Guidance”), in which the Director
`explained that “the PTAB no longer discretionarily denies petitions based on
`applying Fintiv to a parallel ITC proceeding” (Guidance at 7). Patent Owner
`thus focuses on the related district court proceeding, including the effect of
`the ITC Proceeding on the proceeding in the district court.
`For the reasons that follow, we decline to exercise our discretion to
`deny the Petition based on the related district court proceeding.
`The Board’s precedential decision in Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”),
`identifies a non-exclusive list of factors parties may consider addressing
`where there is a related, parallel district court action to determine whether
`such action provides any basis for discretionary denial. Fintiv, Paper 11 at
`5–16. Those factors include:
`
`
`6 Available at https://www.uspto.gov/sites/default/files/documents/interim_
`proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20
`220621_.pdf.
`
`4
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6.
`In evaluating the factors, we take a holistic view of whether efficiency
`and integrity of the system are best served by denying or instituting review.
`Id. at 6.
`
`a. Factor 1
`The district court stayed the related district court litigation pending the
`related ITC investigation. Prelim. Resp. 69. Patent Owner argues that “[t]he
`logical expectation is that the EDTX Proceeding will promptly resume after
`completion of the ITC Proceeding, and there is no evidence that the EDTX
`Proceeding would be stayed pending resolution of this IPR.” Id. As the
`related district court litigation is currently stayed and there is no indication
`from the district court relating to whether a stay would or would not be
`granted pending resolution of an inter partes review, this factor is neutral or
`weighs against exercising our discretion to deny the Petition.
`
`5
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`
`b. Factor 2
`Because, as explained below, we are joining this case to the
`Volkswagen IPR, the final written decision in this case is due in March,
`2023. Given the district court’s stay, there is no scheduled trial date.
`Despite the stay, Patent Owner argues we should use the Eastern District of
`Texas’s 24.2-month median time to trial, which “yields an expected trial
`date in May of 2023.” Prelim. Resp. 70. Even if Patent Owner is correct,
`however, because we are joining this case with the Volkswagen IPR, the
`final decision in this case will precede the district court’s trial. While a
`motion to terminate is pending in the Volkswagen IPR (Volkswagen IPR,
`Paper 11), even should there be a delay occasioned by an “understudy”
`petitioner stepping in, our final decision will still likely issue before Patent
`Owner’s calculated expected trial date. Thus, this factor weighs against
`exercising our discretion to deny the Petition.
`
`c. Factor 3
`Patent Owner argues that “[t]he parties have already completed one
`litigation regarding this same patent in the ITC, which means the EDTX
`Proceeding is likely to be streamlined.” Prelim. Resp. 70. Patent Owner
`argues that this consideration is “a supporting factor similar” to the
`supporting factors described in the Guidance. Id. (citing Guidance 9). That
`portion of the Guidance states that, “[w]here the parties rely on time-to-trial
`statistics, the PTAB will also consider additional supporting factors such as
`the number of cases before the judge in the parallel litigation and the speed
`and availability of other case dispositions.” Guidance 9. However, these
`factors would relate to the time to trial, Factor 2, and not Factor 3; and they
`
`6
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`amount to attorney argument unsupported by facts which would substantiate
`the effect on time to trial of the completion of ITC litigation.
`We do not agree that the evidence shows significant investment in the
`related district court litigation. In these circumstances, we find this factor
`weighs against exercising our discretion to deny the Petition.
`
`d. Factor 4
`Patent Owner argues that there is significant overlap with respect to
`the ITC Proceeding, including overlap of prior art relied on and claims
`challenged, but does not address overlap in the related district court
`proceeding beyond arguing that “the EDTX Proceeding is likely to raise the
`same issues.” See Prelim. Resp. 70–71. In these circumstances, we
`determine this factor is neutral.
`
`e. Factor 5
`Petitioner is a defendant in the related district court proceeding.
`Prelim. Resp. 71. Thus, Petitioner and the defendant in the parallel
`proceeding are the same. If a final written decision is anticipated to occur
`first, this factor typically weighs against exercising discretion to deny
`because of the § 315(e) estoppel. In Huawei Tech. Co. v. WSOU Inv., LLC,
`IPR2021-00225, for example, the panel agreed with the petitioner that “this
`factor favors denial if trial precedes the Board’s Final Written Decision and
`favors institution if the opposite is true.” Paper 11 at 14 (PTAB June 14,
`2021) (internal quotation marks omitted).
`Similarly, in Google LLC v. Parus Holdings, Inc., IPR2020-00846,
`the panel wrote, “Here, . . . Petitioner is the defendant in the parallel
`proceeding. This fact could weigh either in favor of, or against, exercising
`discretion to deny institution, depending on which tribunal was likely to
`
`7
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`address the challenged patent first.” Paper 9 at 21 (PTAB Oct. 21, 2020).
`Thus, this factor therefore weighs against exercising our discretion to deny
`the Petition.
`
`f. Factor 6
`As we noted in our institution decision in the Volkswagen IPR, the
`petition met the standard for institution, but there remained a number of
`factual disputes to be resolved at trial. Volkswagen IPR, Paper 7 at 10–11.
`We decline to resolve those issues, or the additional issues Patent Owner
`raises, here. Instead, as explained below, we will consider Patent Owner’s
`substantive arguments with the benefit of a complete record in the context in
`which Patent Owner first raised them—i.e., in the Volkswagen IPR.
`For the same reasons discussed in our Decision on Institution in the
`Volkswagen IPR (see Volkswagen IPR, Paper 7), we find the Petition’s
`merits meet the reasonably-likely-to-prevail standard for institution. We
`decline, however, to characterize the merits as particularly strong or weak.
`Thus, we find this factor neutral.
`
`g. Summary and Conclusion
`We have considered the circumstances and facts before us in view of
`the Fintiv factors. For the reasons given, we are not persuaded to exercise
`our discretion to deny institution.
`
`2. The Petition’s Merits
`Petitioner represents that the Petition “is substantively the same as the
`Volkswagen IPR petition” (Mot. 1), which we found met the reasonably-
`likely-to-prevail standard for institution under 35 U.S.C. § 314. Volkswagen
`IPR, Paper 7. Further, the Petition “challenges the same claims, on the same
`grounds, and relies on the same prior art as instituted in the Volkswagen
`
`8
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`IPR.” Id. Although Patent Owner does not dispute that the Petition is the
`same as the Volkswagen IPR’s petition, Patent Owner raises a number of
`substantive challenges, including some based on evidence submitted in the
`Volkswagen IPR after institution. See, e.g., Prelim. Resp. 17, 18, 27, 34–35,
`39, 41, 44–47, 50, 52, 55, 57, 60–61, 63, 65.
`We acknowledge Patent Owner’s arguments that Petitioner has not
`shown sufficiently that claims 1–32 are unpatentable over the asserted prior
`art. See Prelim. Resp. 23–66. Based on our independent review, Patent
`Owner’s Preliminary-Response arguments are substantively the same as
`those in Patent Owner’s Response to the Volkswagen IPR petition.
`Compare id. with Volkswagen IPR, Paper 10 at 29–75. Rather than decide
`those issues here, we grant the Petition and join Petitioner to the
`Volkswagen IPR, as that will provide us with the opportunity to more fully
`consider Patent Owner’s arguments with the benefit of a complete record
`and does so without imposing any additional burden on Patent Owner.
`At this stage of the proceeding and based on our preliminary review,
`we find Petitioner has demonstrated a reasonable likelihood of showing the
`unpatentability of the challenged claims for the same reasons discussed in
`our Decision on Institution in the Volkswagen IPR. Accordingly, we grant
`the Petition, and institute inter partes review of the challenged claims.
`
`B. Motion for Joinder
`Joinder in inter partes reviews is governed by 35 U.S.C. § 315(c),
`which reads:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response
`
`9
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`A motion for joinder should: (1) set forth reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See Kyocera Corp. v. SoftView LLC, Case
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).
`We instituted the Volkswagen IPR on March 16, 2022. See
`Volkswagen IPR, Paper 7. Petitioner filed this Petition and Motion for
`Joinder on March 28, 2022, i.e., within one month of the institution date of
`the Volkswagen IPR. See Pet.; Mot. Thus, Petitioner timely filed its Motion
`for Joinder. See 37 C.F.R. § 42.122(b).
`Petitioner represents that its Petition “is substantively the same as the
`Volkswagen IPR petition. It challenges the same claims, on the same
`grounds, and relies on the same prior art as instituted in the Volkswagen
`IPR.” Mot. 1. Petitioner further represents that should it be joined to the
`Volkswagen IPR, “[Petitioner] will act as an ‘understudy’ and will not
`assume an active role unless the [current] petitioner ceases to participate” in
`the Volkswagen IPR. Id. at 2. Thus, Petitioner agrees to proceed solely on
`the grounds, evidence, and arguments in the Volkswagen IPR and agrees not
`to seek any additional depositions or deposition time. Id. Petitioner asserts
`that “[t]hese limitations will avoid lengthy and duplicative briefing.” Id.
`Petitioner additionally notes that “If [Volkswagen] later ceases participation
`in the instituted [Volkswagen] IPR, Petitioners will work with BMW and the
`PTAB to ensure that only one petitioner assumes the lead, active role in the
`
`10
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`proceeding in place of [Volkswagen], and the other continues in an
`understudy role.” Id. at 4 n.2; see Volkswagen IPR, Paper 11 (joint motion
`to terminate, filed August 31, 2022).
`Other than the merits arguments addressed above, Patent Owner does
`not separately contest joinder.
`We are persuaded by Petitioner’s arguments. Because the Petition
`challenges the same claims on the same grounds using the same prior art,
`Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15
`at 4. Indeed, the Board “routinely grants motions for joinder where the party
`seeking joinder introduces identical arguments and the same grounds raised
`in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon
`Company, IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016).
`Moreover, because the issues to be decided are the same and Petitioner
`agrees to take an “understudy” role to the petitioner in the Volkswagen IPR
`by consolidating all filings, refraining from advancing new arguments,
`binding itself to any discovery agreements, and limiting its deposition time
`to the time already allotted, Kyocera factors (3) and (4) also favor joinder.
`See Mot. 8–9; Kyocera, IPR2013-00004, Paper 15 at 4. Thus, we find that
`joining Petitioner to the Volkswagen IPR is appropriate under the present
`circumstances. We, therefore, grant Petitioner’s Motion for Joinder.
`
`III. CONCLUSION
`For the foregoing reasons, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood that it will succeed in showing claims
`1–32 are unpatentable under 35 U.S.C. § 103. At this preliminary stage, we
`have not made a final determination with respect to the patentability of the
`challenged claims or any underlying factual and legal issues.
`
`11
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`Given that Petitioner is being joined as a party to the Volkswagen
`IPR, Petitioner is bound by the ultimate determination made in the
`Volkswagen IPR. See 35 U.S.C. §§ 315(e)(1), 325(d); 37 C.F.R.
`§ 42.73(d)(1). Accordingly, Petitioner shall not advance any arguments
`regarding these claims in this proceeding; all grounds raised by Petitioner
`regarding these claims will be addressed in the Volkswagen IPR.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted in IPR2022-00776;
`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`01531 is granted, and Petitioner is joined as a petitioner in IPR2021-1531;
`FURTHER ORDERED that all future filings shall be made in
`IPR2021-01531;
`FURTHER ORDERED that Petitioner shall file each paper due in
`IPR2021-01531 as a consolidated filing with the petitioner in the
`Volkswagen IPR, except for a paper that does not involve the petitioner in
`the Volkswagen IPR;
`FURTHER ORDERED that, for each paper due in IPR2021-01531,
`Petitioner may not file any paper in addition to the consolidated paper filed
`in the Volkswagen IPR absent prior authorization from the Board;
`FURTHER ORDERED that Petitioner and the petitioner in the
`Volkswagen IPR shall collectively designate attorneys to conduct the cross-
`examination of any witness produced by Patent Owner and the redirect of
`any witness produced by the petitioner in the Volkswagen IPR, within the
`timeframes set forth in 37 C.F.R. § 42.53(c) or agreed to by the parties;
`
`12
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`FURTHER ORDERED that Petitioner and the petitioner in the
`Volkswagen IPR shall collectively designate attorneys to present at the oral
`hearing, if requested and scheduled, in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2021-01531 shall
`be changed to reflect joinder of Mercedes-Benz Group AG and Mercedes-
`Benz USA, LLC as a petitioner in accordance with the attached example;
`and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-01531.
`
`
`
`
`
`
`13
`
`
`
`IPR2022-00776
`Patent 8,289,082 B2
`PETITIONER:
`
`Celine J. Crowson
`Joseph J. Raffetto
`Scott Hughes
`HOGAN LOVELLS US LLP
`celine.crowson@hogan.com
`joseph.raffetto@hoganlovells.com
`scott.hughes@hoganlovells.com
`
`
`PATENT OWNER:
`
`Michael F. Heim
`Christopher L. Limbacher
`R. Allan Bullwinkel
`HEIM PAYNE & CHORUSH, LLP
`mheim@hpcllp.com
`climbacher@hpcllp.com
`abullwinkel@hcpllp.com
`
`14
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`BMW OF NORTH AMERICA, LLC,
`MERCEDES-BENZ GROUP AG, and MERCEDES-BENZ USA, LLC,
`Petitioners,
`
`v.
`
`ARIGNA TECHNOLOGY LTD.,
`Patent Owner.
`
`IPR2021-015317
`Patent 8,289,082 B2
`
`
`
`
`
`
`
`
`
`
`
`
`7 BMW of North America, LLC, petitioner in IPR2022-00737, and
`Mercedes-Benz Group AG and Mercedes-Benz USA, LLC, petitioners in
`IPR2022-00776, have been joined as petitioners in this proceeding.
`
`
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