UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`AMERICAN HONDA MOTOR CO., INC.,
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`Petitioners,
`
`v.
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`INTELLECTUAL VENTURES II LLC,
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`Patent Owner.
`______________
`Case No. IPR2023-00031
`U.S. Patent No. 9,291,475
`______________
`
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.22, AND 42.122(b)
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`______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`AMERICAN HONDA MOTOR CO., INC.,
`
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`
`Patent Owner.
`______________
`Case No. IPR2023-00031
`U.S. Patent No. 9,291,475
`______________
`
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.22, AND 42.122(b)
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`American Honda Motor Co., Inc. (“Honda” or “Petitioner”) respectfully
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`requests that its Petition for inter partes review of U.S. Patent No. 9,291,475 (the
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`“’475 patent”) (“Petition”) be granted and joined pursuant to 35 U.S.C. § 315(c) and
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`37 C.F.R. §§ 42.22 and 42.122(b) with the Petition for inter partes review filed by
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`Toyota Motor Corp. (“Toyota”) concerning the ’475 Patent: Toyota Motor Corp. v.
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`Intellectual Ventures II LLC, IPR2022-00708 (“Toyota IPR”).
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`On March 29, 2022, Toyota filed a petition for inter parties review of the
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`’475 Patent. See Toyota Motor Corp. v. Intellectual Ventures II LLC, IPR2022-
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`00708, Paper 1 (P.T.A.B. Mar. 29, 2022). The Toyota IPR has not yet been
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`instituted and is, thus, at an early stage. Petitioners concurrently file this motion
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`with a petition for inter partes review of the ’475 patent. Toyota has represented to
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`Honda that it will not oppose this Motion for Joinder.
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`The Toyota IPR is identical to the Honda IPR in all substantive respects and
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`relies upon the same expert declarant.1 Honda does not seek to alter the grounds
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`upon which Toyota sought review and does not seek any change in the schedule for
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`that IPR proceeding.
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`1 Modifications have been made to Section VI of the Petition, addressing the
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`Board’s discretion deny institution, but the grounds addressing the
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`unpatentability of the ’475 Patent are substantively the same at the Toyota IPR.
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`1
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`In accordance with the Board’s Representative Order identifying matters to
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`be addressed in a motion for joinder (Kyocera Corp. v. Softview LLC,
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`IPR2013-00004, Paper 15 (P.T.A.B. Apr. 24, 2013)), Petitioners submit that:
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`(1)
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`joinder is appropriate because it will promote efficient determination of
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`the validity of the ’475 Patent without prejudice to Toyota or Patent
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`Owner Intellectual Ventures II LLC (“IV”);
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`(2)
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`Petitioners challenge the same claims of the ’475 patent using the same
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`grounds as Toyota;
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`(3)
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`joinder need not affect the schedule in the Toyota IPR—as the instant
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`petition is substantially identical to the Toyota petition and can be
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`addressed concurrently—nor
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`increase
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`the complexity of
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`that
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`proceeding, minimizing costs; and
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`(4)
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`Petitioners are willing to agree to consolidated filings with Toyota to
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`eliminate burden and schedule impact.
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`Accordingly, joinder should be granted. See, e.g., id. at 4 (noting factors
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`considered in granting joinder requests).
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`I.
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`PETITIONER’S MOTION FOR JOINDER IS TIMELY
`As discussed below, Petitioner’s motion for joinder is timely pursuant to
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`35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) because it is being filed
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`prior to the institution of the Toyota IPR.
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`2
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`The Board may join any party who has properly filed a petition to a proceeding
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`following institution of an inter partes review. 35 U.S.C. § 315(c). If a petitioner
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`seeks to be joined as a party to another inter partes review of the same patent, it is
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`required to file a request “no later than one month after the institution date of any
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`inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
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`Here, Petitioners have moved for joinder “no later than one month after the
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`institution date” of inter partes review in the Toyota IPR, which has not yet been
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`instituted. Therefore, Petitioner’s request to be joined as a party to the Toyota IPR
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`is timely.
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`II.
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`PETITIONERS SHOULD BE JOINED AS PARTIES TO THE
`TOYOTA IPR
`The Board has provided that a motion for joinder should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule of the existing proceeding; and (4) address specifically how briefing
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`and discovery may be simplified. See, e.g., Kyocera, IPR2013-00004, Paper 15 at 4.
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`Analysis of these factors here warrants the grant of the requested joinder.
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`A.
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`Joinder of Petitioners Will Promote an Efficient Determination of
`the Validity of the ’475 Patent Without Prejudice to Any Party
`If Petitioners were joined as parties, the validity of the grounds raised in
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`Toyota’s IPR and Petitioner’s concurrently filed Petition could be determined in a
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`3
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`
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`single proceeding. Petitioner’s Petition challenges the validity of the same claims
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`of the ’475 Patent on the same grounds as Toyota’s Petition. Petitioners also rely on
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`substantially the same supporting evidence in their Petition as in Toyota’s Petition,
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`including the same expert and expert declaration. See Toyota, IPR2022-00708,
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`Paper No. 1. A consolidated proceeding with Petitioner Toyota will therefore be
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`more efficient and less wasteful, as only a single trial on these common grounds
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`would be required. See, e.g., Oracle Am., Inc. v. Realtime Data LLC,
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`IPR2016-01672, Paper No. 13 at 7 (P.T.A.B. Mar. 7, 2017).
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`Joining Petitioners as parties to the Toyota IPR would also not cause any
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`prejudice to Toyota or IV. IV, as the patent owner, must respond to the common
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`invalidity grounds identified in Toyota’s Petition regardless of joinder. In fact, a
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`single trial would reduce the burden on IV by limiting duplication of effort as it
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`would have to address these common invalidity grounds once. As Honda’s Petition
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`raises exactly the same grounds as Toyota’s Petition, Petitioners would still be able
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`to pursue the same invalidity arguments if joinder were not granted. For IV and
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`Toyota, Honda’s Petition has been filed sufficiently early so that joinder would
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`affect neither the schedule of the inter partes review nor the costs associated with a
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`full trial. See Oracle Am., IPR2016 01672, Paper No. 13 at 7.
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`4
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`Petitioner agrees not to be permitted any arguments separate from those
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`advanced by Petitioner and Toyota in the consolidated filings. These limitations
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`avoid lengthy and duplicative briefing.
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`B. No New Grounds of Unpatentability Are Asserted
`The Petitioner’s Petition does not present any new grounds of unpatentability.
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`As mentioned above, the Petitioner’s Petition presents only the asserted grounds
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`from the Toyota IPR. Additionally, the Petitioner’s Petition refers to the same prior
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`art analysis and expert testimony submitted by Toyota.
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`C.
`Joinder Would Not Affect the Schedule in the Toyota IPR
`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. In this case, joinder will not affect the Board’s ability to issue a
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`final written decision within the one-year timeframe because Petitioner’s Petition is
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`substantively the same as the Toyota Petition and no new expert testimony or
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`evidence is presented.
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`D.
`
`Petitioners Will Agree to Consolidated Filings to Eliminate Burden
`and Schedule Impact
`To further prevent joinder from imposing any burden on Toyota or IV and to
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`further ensure that there are no changes in the potential trial schedule, Petitioners
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`will agree to submit consolidated filings for all substantive papers in the respective
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`proceedings with Toyota and to incorporate its filings with those of Toyota in a
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`consolidated filing, subject to the ordinary rules for one party on page limits. See,
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`
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`5
`
`
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`
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`e.g., Torrent Pharms. Ltd. v. UCB Pharma GMBH, IPR2016-01636, Paper No. 10
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`at 5 (P.T.A.B. Dec. 7, 2016) (granting joinder where petitioner agreed to
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`consolidated filings).
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`By consolidating filings with Toyota, IV will only need to respond to one
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`principal set of papers. No further time to address additional arguments would be
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`required by either Toyota or IV, and the consolidated trial could thus proceed at the
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`same pace as if Petitioners were not joined. See id.; Amerigen Pharms. Ltd. v. UCB
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`Pharma GMBH, IPR2016-01665, Paper No. 8 at 6 (P.T.A.B. Dec. 7, 2016).
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`III. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that the Board grant
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`its concurrently filed Petition for inter partes review of the ’475 patent and
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`consolidate the grounds of invalidity therein raised in the Toyota IPR.
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`The undersigned attorney may be reached by telephone at (415) 439-1416.
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`Although Petitioner believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
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`required for this Motion to Deposit Account No. 506092.
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`*
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`*
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`*
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`6
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`Date: October 11, 2022
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`Respectfully submitted,
`
`/Reza Dokhanchy/
`
`
`Reza Dokhanchy (Reg. No. 62,795)
`KIRKLAND & ELLIS LLP
`555 California St.
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`reza.dokhanchy@kirkland.com
`
`Michael W. De Vries, (to seek pro hac
`vice admission)
`KIRKLAND & ELLIS LLP
`555 South Flower Street
`Los Angeles, CA 90071
`Telephone: 213-680-8400
`Facsimile: 213-680-8500
`michael.devries@kirkland.com
`
`Adam R. Alper, (to seek pro hac vice
`admission)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`adam.alper@kirkland.com
`
`Akshay S. Deoras, (to seek pro hac vice
`admission)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: 415-439-1400
`Facsimile: 415-439-1500
`akshay.deoras@kirkland.com
`
`7
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`
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`CERTIFICATE OF SERVICE
`The undersigned certifies that the foregoing document was served on October
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`11, 2022 via overnight delivery directed to the correspondence address of record for
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`the patent owner at the following address:
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`Volpe Koenig
`30 South 17th Street, 18th Floor
`Philadelphia, PA 19103
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` A
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` courtesy copy was also served by electronic mail on counsel of record for
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`the Petitioner and Patent Owner in IPR2022-00708 and the attorneys below for the
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`following related District Court matter:
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`Toyota Motor Corp. v. Intellectual Ventures II LLC, IPR2022-00708
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`Petitioner
`David C. Reese
`James R. Barney
`Luke McCammon
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`david.reese@finnegan.com
`james.barney@finnegan.com
`luke.mccammon@finnegan.com
`
`Patent Owner
`Ryan O’Donnell
`Jeffrey G. Glabicki
`Robert D. Leonard
`Dawn C. Kerner
`Michael F. Snyder
`Volpe Koenig
`30 South 17th Street, 18th Floor
`Philadelphia, PA 19103
`
`
`
`
`
`
`
`
`
`
`
`
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`RODonnell@vklaw.com
`JGlabicki@vklaw.com
`RLeonard@vklaw.com
`DKerner@vklaw.com
`Msnyder@vklaw.com
`
`
`Intellectual Ventures I LLC et al. v. American Honda Motor Co., LTD. et al.,
`Case No. 3:22-cv-00761 (N.D. Tex.)
`
`Jonathan K. Waldrop
`jwaldrop@kasowitz.com
`Kasowitz Benson Torres LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, CA 94065
`
`Bruce W. Steckler
`bruce@swclaw.com
`Steckler Wayne Cherry & Love PLLC
`12720 Hillcrest Road, Suite 1045
`Dallas, Texas 75230
`
`
`
`/Reza Dokhanchy/
`Reza Dokhanchy (Reg. No. 62,795)
`
`
`
`
`
`9
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`
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