On August 1, 2024, Mobileye Global, Inc. (“Petitioner”) filed a Petition for inter partes review of claims 1–22 of U.S. Patent No. 9,671,328 B2 (Ex. 1001, “the ’328 patent”).

C. Duplication of Efforts This inter partes review was instituted on March 5, 2025, and the parties have not yet filed any post-institution briefs on the merits.

This proceeding is subject to a statutory deadline that requires a final decision by March 5, 2026, unless the Chief Administrative Patent Judge extends it (up to six months) for good cause.

Although a final Office Action was issued in the reexamination, Patent Owner has yet to respond (for example, by filing an appeal).

H. Simplifying the Issues Allowing the reexamination proceeding to continue would result in a decision addressing only some of the claims subject to this inter partes review.

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 9,671,328 B2 command of the factual record, the applicable law, and Board procedures, as well as the authority to commit the party they represent.

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).

Petitioner argues that it is unlikely that trial will occur prior to the latest due date for a final written decision in this proceeding because the Texas Court authorized additional discover as to whether venue is proper.

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.

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. 9,671,328 (“’328 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 ’328 patent in a single proceeding.

On April 4, 2025, contemporaneously with this Motion, Petitioner filed a Petition for inter partes review (IPR2025-00749) requesting cancellation of claims 1-22 of the ’328 patent, which is substantively identical to the Mobileye IPR.

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.