The Board determined that “[i]nstitution of an inter partes review under these circumstances would not be consistent with ‘an objective of the AIA ... to provide an effective and efficient alternative to district court litigation.’” Id. (citing Gen.

“[T]he Board’s cases addressing earlier trial dates as a basis for denial under NHK have sought to balance considerations such as system efficiency, fairness, and patent quality.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5 (PTAB Mar. 20, 2020) (precedential).

Fintiv, Paper 11 at 11 (“If the evidence shows that the petitioner filed the petition expeditiously, such as promptly after becoming aware of the claims being asserted, this fact has weighed against exercising the authority to deny institution under NHK.”).

Other Considerations, Including the Merits As discussed in more detail below, we find the evidence and arguments presented by Petitioner persuasive on this preliminary record and sufficient to meet our standard for instituting inter partes review.

Patent Owner argues that “Petitioner ignores the significant differences in the function, structure, and operation of Lumia and Gallagher,” characterizing Gallagher as disclosing “a system where photodiodes continuously record intensity values in order to identify peak responses as indicating the presence of pavement markers” and Lumia as disclosing “a system where an operator separately locks onto an individual sign with a video camera, takes a gray scale image of the sign, and uses a histogram of the frequency of grey level values among the pixels of the image to measure the sign’s retroreflectivity.” Id. at 15–18.

For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.

To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.

At DUE DATE 5, Petitioner may file a sur-reply that is limited to responding to the preliminary guidance and/or arguments made in the patent owner’s reply brief.

The parties may request that the in- person hearing instead be held at the USPTO Western Regional Office in San Jose, California.

Patent 9,335,255 B2 command of the factual record, the applicable law, and Board procedures, as well as the authority to commit the party they represent.

Petitioner had a court reporter on the conference call, and the panel asked Mr. Bell to file a copy of the transcript as an exhibit in each proceeding.

A. Alleged New Arguments In its Preliminary Reply, Petitioner presents a stipulation that it describes as being similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part).

During the conference call, we denied authorization for Petitioner to file a motion to strike Patent Owner’s arguments.

Petitioner argued that it has not had an opportunity to address this evidence, which it asserted to violate the Administrative Procedure Act.

Consideration of Exhibits 2015–2019 would be in the interests of justice and beneficial to our decision of whether to institute inter partes review.

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial Appeal Case Tracking System (P-TACTS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

Cory Bell Robert High Benjamin Schlesinger Wyatt Bazrod Gerson Panitch

Petitioner respectfully submits this Motion for Joinder, together with a Petition for Inter Partes Review of U.S. Patent No. 9,335,255 (“’255 Patent”), filed contemporaneously herewith.

The Petition is also narrowly tailored to the same claims, prior art, and grounds for unpatentability that were the subject of the Mobileye IPR.1 Petitioner submits that joinder is appropriate because it will not unduly burden or prejudice the parties to the Mobileye IPR while efficiently resolving the question of the validity of the challenged claims of the ’255 patent in a single proceeding.

On April 4, 2025, contemporaneously with this Motion, Petitioner filed a Petition for inter partes review (IPR2025-00748) requesting cancellation of claims 12-15 and 17-23 of the ’255 patent, which is substantively identical to the Mobileye

Joinder Will Not Unduly Burden or Negatively Impact the Mobileye IPR Trial Schedule Because the Petition is substantively identical to the Mobileye Petition, with the same grounds challenging the same claims as instituted by the Board, there are no new issues for Patent Owner to address and Patent Owner will not be required to present any additional responses or arguments.

Thus, a slight adjustment in the trial schedule, should one be needed, is not enough of a reason to deny joining the present Petition with the Mobileye IPR.

The imaging control circuit 13 “responds to the plurality of sensors in order to determine if spatially adjacent regions of the field of view forward of the vehicle include light of a particular spectral signature above a particular intensity level.” Schofield, 2:28-32, 4:47-5:12, 7:64-8:12.

Measuring retroreflectivity during the day would have been advantageous to allow greater flexibility in testing schedules and the replacement of any markers determined to be faulty as quickly as possible to improve the safety of the roadway.

Lumia, 15 (disclosing using “an electronic flash source to provide a short burst of light” and “a video camera to record the sign,” whose signal “is then converted toa digitally sampled representation of the sign”); Thorpe ¶112.

Because Gallagher recognizes that “road[] authorities worldwide invariably advocate different standards for road markings” and expressed a desire to analyze the data “in a way and to an extent that meets the criteria of each country,” a POSITA would have been motivated to implement Lumia’s determining a luminance value to allow its apparatus to identify and tag any markers “that do not meet the predetermined minimum acceptable reflectance level” for countries that require a minimum retroreflectivity level for road markers.

Discretionary Denial Is Inappropriate Under 35 U.S.C. § 325(d) Where, as here, a petitioner files a “copycat” petition in conjunction with a timely motion for joinder and agrees to assume a “passive understudy role,” the General Plastic factors are “effectively neutraliz[ed].” Apple Inc. v. Uniloc, 2017 LLC, IPR2018-00580, Paper 13 at 10-11 (Aug. 21, 2018).