Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: October 2, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`v.
`NEO WIRELESS, LLC,
`Patent Owner.
`
`IPR2023-00790
`Patent 8,467,366 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKI, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Date: October 2, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`v.
`NEO WIRELESS, LLC,
`Patent Owner.
`
`IPR2023-00790
`Patent 8,467,366 B2
`
`
`
`
`
`
`
`
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKI, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315
`
`
`
`
`
`
`
`
`
`IPR2023-00790
`Patent 8,467,366 B2
`
`INTRODUCTION
`I.
`American Honda Motor Co., Inc. (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1–24 (the “challenged claims”) of
`U.S. Patent No. 8,467,366 B2 (“the ’366 patent,” Ex. 1001). Paper 2
`(“Pet.”). Neo Wireless, LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 9 (“Prelim. Resp.”). Concurrently with the Petition,
`Petitioner filed a Motion for Joinder. Paper 3 (“Mot.”). Patent Owner filed
`an Opposition to Petitioner’s Motion for Joinder (Paper 7), and Petitioner
`filed a Reply (Paper 8).
`In the Motion for Joinder, Petitioner requests that it be joined as a
`party to IPR2023-00426 (“the 426 proceeding”). Mot. 1, 11. Petitioner
`asserts that its Petition “is substantively the same as” the petition in the 426
`proceeding, which sought cancellation of the same challenged claims on the
`same grounds asserted in this proceeding. Id. at 1; compare IPR2022-
`00426, Paper 2 (Petition), 6–9, with Pet. 6–9. In addition, Patent Owner’s
`Preliminary Response is substantially the same as its preliminary response in
`the 426 proceeding. See Prelim. Resp. 1 (“For the panel’s convenience, the
`present response repeats the same reasons and supporting evidence as Patent
`Owner’s response in” the 426 proceeding.). We denied institution on the
`merits in the 426 proceeding. IPR2023-00426, Paper 12 at 30.
`For the reasons discussed below, we deny institution and deny the
`Motion for Joinder.
`
`II. ANALYSIS
`The denial of institution on the merits in the 426 proceeding dictates
`that institution also be denied in this proceeding. Because we did not
`institute review in the proceeding that Petitioner seeks to join as a party, we
`also deny the Motion for Joinder.
`
`2
`
`
`
`IPR2023-00790
`Patent 8,467,366 B2
`Institution of Inter Partes Review
`A.
`Petitioner asserts, and Patent Owner agrees, that the Petition is
`substantively identical to the Petition in the 426 proceeding. In particular,
`Petitioner states that the Petition “challenges the same claims, on the same
`grounds, and relies on the same prior art” as the petition in the 426
`proceeding. Mot. 1; see also id. at 4–5 (“There are no substantive
`differences between [Petitioner’s] and [the 426 proceeding’s] Petitioner’s
`Petition. [Petitioner] also relies on substantially the same supporting
`evidence in its Petition as is relied on in [the 426 proceeding].” (internal
`citation omitted) (footnote omitted)). Petitioner also states that the Petition
`“presents no new grounds of unpatentability.” Id. at 4; see id. at 6–7.
`Similarly, Patent Owner asserts that the Petition is “nearly identical to” the
`petition in the 426 proceeding, and states that its Preliminary Response
`“repeats the same reasons and same supporting evidence as Patent Owner’s
`response” in the 426 proceeding. Prelim. Resp. 1; compare IPR2023-00426,
`Paper 6 (Preliminary Response) with Prelim. Resp.
`After consideration of the arguments in the petition and the
`preliminary response and the evidence of record in the 426 proceeding, we
`denied institution because the petition in the 426 proceeding did not
`sufficiently establish that the cited art disclosed all of the limitations of the
`challenged claims, or that an ordinarily skilled artisan would have modified
`the cited art as proposed. IPR2023-00426, Paper 12 at 20, 28–29. Because
`the arguments and evidence in this proceeding are substantively identical to
`the arguments and evidence in the 426 proceeding, we deny institution in
`this proceeding for the reasons set forth in the Decision Denying Institution
`in the 426 proceeding. Id. at 11–30.
`
`3
`
`
`
`IPR2023-00790
`Patent 8,467,366 B2
`B. Motion for Joinder
`The Director may grant a motion for joinder and allow the movant to
`“join as a party” to an existing proceeding only “[i]f the Director institutes
`an inter partes review” in the proceeding to which joinder as a party is
`sought. 35 U.S.C. § 315(c). Because we did not institute review in the 426
`proceeding, we deny Petitioner’s Motion for Joinder.
`III. CONCLUSION
`For the reasons stated above, we do not institute an inter partes
`review on any claims or challenge to the claims of the ’366 patent, and we
`deny Petitioner’s Motion for Joinder.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and no trial is instituted; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder is denied.
`
`4
`
`
`
`IPR2023-00790
`Patent 8,467,366 B2
`FOR PETITIONER:
`Thomas A. Rozylowicz
`Won S. Yoon
`John T. Johnson
`Jeffrey C. Mok
`FISH & RICHARDSON P.C.
`tar@fr.com
`yoon@fr.com
`jjohnson@fr.com
`jmok@fr.com
`
`FOR PATENT OWNER:
`Kenneth J. Weatherwax
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`
`Hamad M. Hamad
`CALDWELL, CASSADY, & CURRY P.C.
`hhamad@caldwellcc.com
`
`
`
`5
`
`
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