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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`Mercedes-Benz USA, LLC,
`Petitioner,
`
`v.
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`Yechezkal Evan Spero,
`Patent Owner.
`
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`Case [To be assigned]
`Patent 11,208,029
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`PETITIONER’S PETITION RANKING AND EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS
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`On June 8, 2023, Petitioner Mercedes-Benz USA, LLC (“Mercedes” or
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`“Petitioner”) filed a petition for inter partes review of US11,208,029 (the “’029
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`Patent”) in IPR2023-01034 (the “Mercedes Petition”). Petitioner now submits
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`herewith a petition for inter partes review of the ’029 Patent (the “Joinder
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`Petition”) along with a contingent motion to join IPR 2022-01586. Petitioner
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`submits this notice of ranking of its petitions for inter partes review of the ’029
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`Patent, along with an explanation of the material differences between the petitions.
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`See “TRIAL PRACTICE GUIDE UPDATE (July 2019)” at 26-28. The Mercedes
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`Petition and this Joinder Petition each demonstrate that the ’029 Patent’s claims are
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`unpatentable in materially different ways.
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`Material Differences. The Mercedes Petition presents a different case on
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`patentability of the ’029 Patent from the Joinder Petition. Specifically, the
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`Mercedes Petition raises a distinct ground based on an entirely different primary
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`reference—Alden (US 2003/0137849), while the Joinder Petition relies on Beam
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`(US 6,144,158) and Gotou (US 5,588,733) as primary references. Alden is not
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`related to Beam or Gotou in any aspect. Thus, the Mercedes Petition and the
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`Joinder Petition offer non-redundant, non-duplicative, and substantially dissimilar
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`challenges to the ’029 Patent. Additionally, the Mercedes Petition is substantially
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`different from the Joinder Petition in terms of Mercedes’ involvement. Mercedes
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`independently uncovered the primary reference and the different grounds in the
`1
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`Mercedes Petition, and independently prepared and filed that petition. Mercedes
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`had no involvement in the preparation and filing of IPR 2022-01586, which the
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`Joinder Petition seeks to join.
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`Ordering of Petitions. Petitioner ranks its Mercedes Petition ahead of the
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`Joinder Petition. That is, Petitioner prefers and requests initial consideration of the
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`Mercedes Petition before the Board considers the Joinder Petition and its
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`accompanying contingent motion for joinder.
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`Rank
`A
`
`Primary Reference(s)
`Petition
`IPR2023-01034 (the “Mercedes Petition”) Alden
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`B
`
`Present petition seeking to join IPR2022-
`01586 (the “Joinder Petition”)
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`Beam and Gotou
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`
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`As discussed, the Mercedes Petition includes a distinct ground against all 33
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`claims of the ’029 patent, which provides a compelling case of obviousness based
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`on prior art and arguments that the Board has not yet considered. Mercedes has a
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`strong interest in prosecuting a case of unpatentability at the PTAB on its preferred
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`ground. Further, institution could preclude or abridge a jury trial on validity by
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`encouraging a stay and/or leading to a final written decision that estops Petitioner
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`under 35 U.S.C. § 315(e)(2) from asserting printed publication grounds in the
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`district court cases. The scope of the estoppel would be broader if the Mercedes
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`Petition is instituted and proceeds to a final decision than if Mercedes is merely
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`2
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`joined to IPR2022-01586. See Network-1 Techs., Inc. v. Hewlett-Packard Co., 981
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`F.3d 1015, 1026-28 (Fed. Cir. 2020) (finding the scope of estoppel narrowed when
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`a petitioner was limited to joining an instituted proceeding). The district court
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`cases is still in its infancy and has been indefinitely stayed pending resolution of
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`whether the complaints should be dismissed due to lack of standing and failure to
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`join necessary parties. Thus, it is very likely that the Board’s statutory deadline for
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`issuing a final written decision in the Mercedes Petition will precede any jury trial.
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`In view of the material differences shown above, and for the reasons set
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`forth in the Mercedes Petition, the Board should institute the Mercedes Petition. If
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`the Board were to decline to institute review on the Mercedes Petition, the next
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`best course of action would be to institute review on this Joinder Petition and grant
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`Petitioner’s contingent motion for joinder. As with the Mercedes Petition (albeit to
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`a lesser extent), institution and joinder would promote efficiency in the district
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`court cases, at least with respect to the grounds of this Joinder Petition, and would
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`do so at no expense or prejudice to Patent Owner.
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`Dated: June 23, 2023
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`Respectfully submitted,
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`/s/ Celine J. Crowson
`
`
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`Celine Jimenez Crowson (Reg. No. 40,357)
`3
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`Joseph J. Raffetto (Reg. No. 66,218)
`Scott Hughes (Reg. 68,385)
`Ryan Stephenson (Reg. 76,608)
`HOGAN LOVELLS US LLP
`555 13th Street N.W.
`Washington, D.C. 20004
`Telephone: 202.637.5600
`Facsimile: 202.637.5910
`
`Counsel for Petitioner Mercedes-Benz USA, LLC
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`4
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