Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 13
`Entered: July 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NISSAN NORTH AMERICA, INC., TOYOTA MOTOR NORTH
`AMERICA, INC., SUBARU OF AMERICA, INC., AMERICAN HONDA
`MOTOR CO., INC., FORD MOTOR COMPANY, JAGUAR LAND
`ROVER NORTH AMERICA, LLC, and VOLVO CARS OF NORTH
`AMERICA, LLC,
`Petitioner,
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00291
`Patent 6,324,463
`_______________
`
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 13
`Entered: July 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NISSAN NORTH AMERICA, INC., TOYOTA MOTOR NORTH
`AMERICA, INC., SUBARU OF AMERICA, INC., AMERICAN HONDA
`MOTOR CO., INC., FORD MOTOR COMPANY, JAGUAR LAND
`ROVER NORTH AMERICA, LLC, and VOLVO CARS OF NORTH
`AMERICA, LLC,
`Petitioner,
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00291
`Patent 6,324,463
`_______________
`
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`IPR 2014-00291
`Patent 6,324,463
`
`
`On April 10, 2014, following a conference call, we authorized Patent
`
`Owner to file a motion to join this proceeding with four other related inter
`
`partes review proceedings. See Paper 8. The five related proceedings are
`
`IPR2014-00279, IPR2014-00280, IPR2014-00281, IPR2014-00289, and
`
`IPR2014-00291 (“the five subject proceedings”). See id. Patent Owner
`
`accordingly filed a Motion for Joinder (Paper 9, “Motion” or “Mot.”) on
`
`April 24, 2014. Petitioner filed an Opposition to the Motion for Joinder
`
`(Paper 10, “Opposition” or “Opp.”) on May 8, 2014.
`
`As an initial matter, we note that under our Rules, “[a] motion will not
`
`be entered without Board authorization.” 37 C.F.R. § 42.20(b) (2013). Our
`
`April 10, 2014 Order authorized Patent Owner only to file a motion to join
`
`the five subject proceedings. See Paper 8, 5. While the Motion accordingly
`
`requests such a joinder, it also requests “an order requiring Petitioner to
`
`identify a single lead counsel authorized to speak on its behalf and a backup
`
`counsel designated to speak for Petitioner and lead counsel.” Mot. 1. The
`
`Motion further requests, if joinder is opposed by Petitioner or if we deny the
`
`Motion, that we deny each Petition in the five subject proceedings for
`
`Petitioner’s alleged failure to comply with 37 C.F.R. § § 42.10(a) and
`
`alleged violation of what Patent Owner describes as a “one petitioner, one
`
`voice rule.” Id. We deny these requests pursuant to Rule 42.20(b) as an
`
`unauthorized motion, and turn to the authorized portion of the Motion
`
`request joinder of the five subject proceedings.
`
`Board’s Authority to Join the Five Subject Proceedings
`
`The parties dispute whether we have the authority to join the five
`
`subject proceedings into one proceeding before deciding whether to institute
`
`2
`
`
`
`IPR 2014-00291
`Patent 6,324,463
`
`
`a trial in any of the five subject proceedings. Patent Owner contends 37
`
`C.F.R. § 42.122 (2013) gives us such authority. See Mot. 14. Petitioner
`
`contends 35 U.S.C. § 315(c) explicitly prohibits pre-institution joinder of
`
`inter partes review proceedings. See Opp. 14. We need not resolve this
`
`dispute because, even if we do have the authority to join multiple inter
`
`partes review proceedings prior to instituting any trials, we are not
`
`persuaded by the Motion to do so in this case.
`
`Whether to Join the Five Subject Proceedings
`
`As Patent Owner contends, the five subject proceedings have many
`
`similarities. They each concern the same patent, U.S. Patent No. 6,324,463
`
`(“the ’463 patent”). See Mot. 2–3 (¶¶ 1–5). The Petitioner in each case is
`
`the same group of parties, as identified above in the caption of this decision.
`
`See id. Each subject proceeding was filed on either December 20, 2013 or
`
`December 23, 2013. See id. There is a significant amount of overlap among
`
`the ’463 patent claims being challenged in each of the five subject
`
`proceedings, and the five Petitions identify the same constructions for the
`
`same four claim terms. See id. at 2–3 (¶¶ 1–7). There is also some overlap
`
`in the prior art being cited in the five subject proceedings.1 Substantially the
`
`same group of people is identified as lead and back-up counsel among the
`
`five subject proceedings, although a different person is identified as lead
`
`
`1 Specifically, alleged Admitted Prior Art is raised in two proceedings (see
`IPR2014-00281, Paper 1, 36–37; IPR2014-00289, Paper 3, 48–60), a Toyota
`Celsior Owner’s Manual is raised in two proceedings (see IPR2014-00280,
`Ex. 1010; IPR2014-00291, Ex. 1009), Nagashima
`is raised
`in
`two
`proceedings (see IPR2014-00281, Ex. 1009; IPR2014-00289, Ex. 1010), and
`Narita is raised in two proceedings (see IPR2014-00281, Ex. 1004;
`IPR2014-00291, Ex. 1006).
`
`3
`
`
`
`IPR 2014-00291
`Patent 6,324,463
`
`
`counsel for Petitioner in each proceeding. See id. at 3–5 (¶¶ 9–13). The
`
`Petitions in three of the five subject proceedings (IPR2014-00279, IPR2014-
`
`00289, and IPR2014-00291) include a Declaration executed by the same
`
`person, David A. McNamara, in support of the Petition. See id. at 3 (¶ 8).
`
`The Motion asserts that having to defend against each of the five
`
`subject proceedings separately will prejudice Patent Owner, which allegedly
`
`would be alleviated by joinder. See Mot. 11–13. Patent Owner contends
`
`five separate proceedings “means five of everything at five times the cost —
`
`five separate filings, five separate expert declarations, five separate oral
`
`hearings . . . , [and] at least five depositions of Petitioner’s declarants . . . .”
`
`Mot. 12. Patent Owner also asserts that, with five separate proceedings,
`
`Patent Owner will have to coordinate with five separate counsel to schedule
`
`depositions. See id. (citing IPR2013-00250, Paper 25, p. 4 (Sept. 3, 2013) as
`
`“explaining that ‘joinder of the proceedings will allow for a single
`
`deposition, rather than multiple depositions, of the same witnesses’”).
`
`Petitioner by contrast contends that maintaining five separate proceedings
`
`would not unduly prejudice Patent Owner, because Patent Owner “placed
`
`the burden of defending the validity of its patent against multiple parties on
`
`itself” by filing separate lawsuits against each of the parties identified as a
`
`petitioner in the five subject proceedings. Opp. 9. Petitioner also contends
`
`that joinder is not appropriate because of many differences among the five
`
`subject proceedings, including different grounds of unpatentability, different
`
`prior art, and different declarants. See Opp. 3–6.
`
`As the moving party, Patent Owner has the burden of proof to
`
`establish that it is entitled to joinder of the five subject proceedings. 37
`
`C.F.R. § 42.20(c) (2013). We are not persuaded by the Motion that joining
`
`4
`
`
`
`IPR 2014-00291
`Patent 6,324,463
`
`
`the five subject proceedings would reduce, in any material manner, the
`
`burden(s) placed upon Patent Owner in defending the validity of the ’463
`
`patent before the Board. Regardless of whether the five subject proceedings
`
`are joined or not joined, Patent Owner will still have to defend against the
`
`same number of parties (regardless of whether they are identified as one
`
`Petitioner or multiple co-Petitioners), and prepare brief(s) addressing the
`
`same ground(s) upon which we institute review, if any. Patent Owner
`
`presents no credible evidence or argument in support of its statement that
`
`five separate proceedings “means five of everything at five times the cost”
`
`versus one joined proceeding which would involve the same substantive
`
`issues as the five separate proceedings. The alleged discovery burden(s)
`
`imposed by five separate proceedings can be alleviated substantially by
`
`entering the same schedule in each case, in conjunction with cooperation
`
`between the parties and motion practice in the event of disputes — which is
`
`no different than what would happen in one joined proceeding. Moreover,
`
`we agree with Petitioner that Patent Owner invited a multi-front battle
`
`concerning the validity of the ’463 patent when it filed ten separate
`
`infringement lawsuits on December 21, 2012, with another five lawsuits
`
`following on January 15, 2013. See Opp. 8; Paper 1, 3–4; Paper 5, 2–4.
`
`The Motion also contends joinder of the five subject proceedings
`
`before institution of any trial(s) in response to the Petitions would benefit the
`
`Board. See Mot. 13. Joinder is said to “put[] the Board in a better position
`
`to assess inter-petition redundancy of the more than 180 separate alleged
`
`grounds of unpatentability and address any inconsistent statements.” Id.
`
`Petitioner disagrees. See Opp. 12–14. We are not persuaded that joinder in
`
`the present case, whether before or after institution of trial(s), materially
`
`5
`
`
`
`IPR 2014-00291
`Patent 6,324,463
`
`
`would benefit the Board. The Board has assigned the same three-Judge
`
`panel to each of the five subject proceedings, which substantially addresses
`
`Patent Owner’s stated concerns regarding avoidance of redundancy and
`
`inconsistency among the five subject proceedings.
`
`The Motion finally asserts joinder of the five subject proceedings
`
`would not prejudice Petitioner. See Mot. 15. Petitioner disagrees. See
`
`Opp. 8–10. Potential prejudice to Petitioner would be a concern if we were
`
`inclined to grant the Motion over Petitioner’s objection. Because we are not
`
`persuaded that granting the Motion would either alleviate Patent Owner’s
`
`burden(s) in the five subject proceedings, or benefit the Board in conducting
`
`these proceedings, we need not consider potential prejudice to Petitioner any
`
`further.
`
`For the foregoing reasons, Patent Owner’s Motion for Joinder is
`
`Conclusion
`
`DENIED.
`
`6
`
`
`
`IPR 2014-00291
`Patent 6,324,463
`
`
`FOR PETITIONER:
`
`Wab Kadaba
`KILPATRICK TOWNSEND & STOCKTON LLP
`wkadaba@kilpatricktownsend.com
`
`Clay Holloway
`KILPATRICK TOWNSEND & STOCKTON LLP
`wkadaba@kilpatricktownsend.com
`
`Matthew D. Satchwell
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`
`Steven Reynolds
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`
`William H. Mandir
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`
`John M. Caracappa
`STEPTOE & JOHNSON LLP
`jcaracap@steptoe.com
`
`Matthew J. Moore
`LATHAM & WATKINS LLP
`matthew.moore@lw.com
`
`FOR PATENT OWNER:
`
`John R. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`Kelly L. Kasha
`KASHA LAW LLC
`kelly.kasha@kashalaw.com
`
`7
`
`
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