`571-272-7822
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` Paper 12
` Entered: November 25, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HYUNDAI MOTOR COMPANY
`Petitioner
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner
`____________
`
`Case IPR2015-00176
`Patent 8,036,788
` ____________
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`Case IPR2015-00176
`Patent 8,036,788
`
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`I. INTRODUCTION
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`On October 28, 2014, Hyundai Motor Company (“Hyundai”) filed
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`a petition (“Pet.”) for inter partes review of U.S. Patent No. 8.036,788
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`B2 (Ex. 1001, “the ’788 patent”). Paper 1. Also on October 28, 2014,
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`Hyundai filed a Motion for Joinder (“Mot”) to join this proceeding with
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`American Honda Motor Co., Inc. v. American Vehicular Sciences LLC, Case
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`IPR2014-00629 (“the Honda IPR”) in which the Board already instituted
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`inter partes review of the ’788 patent. Paper 3. Hyundai indicates that
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`Patent Owner (“AVS”) has asserted the ’697 patent against Hyundai in an
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`action for patent infringement, in the U.S. District Court for the Eastern
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`District of Texas. Mot. 2. Despite having been given authorization to do so,
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`neither American Honda Motor Co., Inc. (“Honda”), the Petitioner in the
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`Honda IPR, nor AVS filed an opposition to Hyundai’s Motion for Joinder.
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`In a separate decision, entered concurrently herewith, we institute trial in this
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`proceeding.
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`The Motion for Joinder is granted.
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`II. DISCUSSION
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`An inter partes review may be joined with another inter partes
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`review. The statutory provision governing joinder of inter partes review
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`proceedings is 35 U.S.C. § 315(c), which reads as follows:
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`(c) JOINDER. -- If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
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`Patent 8,036,788
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` As the movant, Hyundai bears the burden to show that joinder is
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`appropriate. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth
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`the reasons joinder is appropriate; (2) identify any new grounds of
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`unpatentability asserted in the petition; (3) explain what impact (if any)
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`joinder would have on the trial schedule for the existing review; and (4)
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`address specifically how briefing and discovery may be simplified. See
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`Frequently Asked Question (“FAQ”) H5 on the Board’s website at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`Hyundai represents that it does not raise any issues that are not
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`already before the Board and Hyundai’s Petition is based on the same
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`grounds and same combinations of prior art as those on which trial has been
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`instituted in the Honda IPR. Mot. 4. Each ground proposed by Hyundai is
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`“identical” to a ground that has been instituted for trial in the Honda IPR.
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`Id. Hyundai also represents that its arguments are “identical” to those made
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`by Honda in the Honda IPR. Id. Hyundai further indicates that with respect
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`to the grounds it has proposed, it relies on the same declaration testimony of
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`Mr. Christopher Wilson, albeit submitted in a separate declaration, as was
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`relied on by Honda for those same grounds. Id.
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`Under these circumstances, Hyundai indicates that joinder would not
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`affect the timing, i.e., the Scheduling Order, the Honda IPR, and would not
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`impact the due date of the next Due Date, the Patent Owner’s response, due
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`December 1, 2014. Mot. 7. Hyundai states that “AVS should not
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`need any additional discovery of Mr. Wilson beyond that which it has
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`already asked for in the Honda IPR,” and that “AVS’s response would not
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`require any analysis beyond what AVS is already required to undertake to
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`respond to Honda’s petition.” Mot. 4.
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`Hyundai further agrees to have consolidated filings with Honda, in
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`case of joinder, to minimize burden and impact of joinder. Mot. 1.
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`Specifically, Hyundai states:
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`Hyundai is willing to adopt the same procedures ordered by the
`Board in IPR2014-01543 and IPR2014-00634, limiting
`Hyundai to separate filings, if any, of no more than seven pages
`directed only to points of disagreement with Honda, with the
`understanding that Hyundai will not be permitted any separate
`arguments in furtherance of those advance in Honda’s
`consolidated filings. Hyundai Motor Corp. v. Am. Veh. Scis.,
`IPR2014-01543, Paper No. 11, at 4-6 (Oct. 24, 2014).
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`Mot. 5.1 Hyundai further states: “Given that Hyundai and Honda will be
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`addressing the same prior art and the same bases for rejection using the same
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`expert, Hyundai does not envision any differences in position with Honda,
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`and does not believe that it is likely to make any separate filings.” Id.
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`Despite having been authorized to file a stipulation to further limit
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`Hyundai’s participation (Order – Conduct of the Proceedings (Paper 5)), the
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`parties have not filed such a stipulation.
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`Given the representations of Hyundai as noted above, we are
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`persuaded that the impact of joinder on the Honda IPR will be minimal.
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`Also, joinder will enhance efficiency, avoid duplication of efforts, and
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`reduce the potential of inconsistency among proceedings.
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`1 We understand Hyundai’s representation to be that in case its Motion for
`Joinder is granted, Honda will be in control of the contents of the
`consolidated or joint filings of Honda and Hyundai as Petitioners, and that
`Hyundai, to the extent it has any disagreement with a position in a joint
`filing, will be limited to a separate filing of much limited page length.
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`Case IPR2015-00176
`Patent 8,036,788
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`It is
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`III. ORDER
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`ORDERED that IPR2015-00176 is joined with IPR2014-00629;
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`FURTHER ORDERED that, subsequent to joinder, the grounds for
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`trial in the joined proceedings are the same as those for which trial was
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`instituted in IPR2013-00629;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2013-00629 is unchanged, and as modified by any authorized stipulation
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`by the parties;
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`FURTHER ORDERED that, in the joined proceeding, Honda and
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`Hyundai will file papers, except for motions which do not involve the other
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`party, as consolidated filings; Honda will identify each such filing as a
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`Consolidated Filing and will be responsible for completing all consolidated
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`filings; Hyundai may file an additional paper, concurrent with each
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`consolidated filing, not to exceed seven pages, which may address only
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`points of disagreement with positions asserted in the consolidated filing;
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`any such filing by Hyundai must specifically identify and explain each point
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`of disagreement; Hyundai may not file separate arguments in support of
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`points made in Honda’s consolidated filing;
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`FURTHER ORDERED that, in addition to responding to any
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`consolidated filing, AVS may respond separately, but concurrently, to any
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`separate Hyundai filing; any such response by AVS to a Hyundai filing may
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`not exceed seven pages in length and is limited to issues raised in the
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`Hyundai filing;
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`FURTHER ORDERED that Honda and Hyundai will designate
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`attorneys to conduct the cross-examination of any witnesses produced by
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`Patent 8,036,788
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`AVS and the redirect of any witnesses produced by Honda or Hyundai
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`within the time frame normally allotted by the rules for one party; Honda
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`and Hyundai will not receive any separate cross-examination or redirect
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`time;
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`FURTHER ORDERED that any requests by any party for additional
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`deposition time must be brought before the Board;
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`FURTHER ORDERED that the case caption in IPR2014-00629 shall
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`be changed to reflect joinder with this proceeding in accordance with the
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`sample on the next page; and
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`FURTHER ORDERED that this proceeding (IPR2015-00176) is
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`terminated under 37 C.F.R. § 42.72 and all further filings in the joined
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`proceeding shall be made in IPR2014-00629.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMERICAN HONDA MOTOR CO., INC.,
`HYUNDAI MOTOR COMPANY,
`Petitioners,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00629
`Case IPR2015-00176
`Patent 8,036,788 B2
`____________
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`7
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`Case IPR2015-00176
`Patent 8,036,788
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`PETITIONER:
`
`Edward Naidich
`Christopher Kurpinski
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Ed.Naidich@finnegan.com
`Christopher.Kurpinski@finnegan.com
`
`
`PATENT OWNER:
`
`Scott P McBride
`Thomas J. Wimbiscus
`Stephanie F. Samz
`MCANDREWS, HELD & MALLOY, LTD.
`smcbride@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`ssamz@mcandrews-ip.com
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`PETITIONER in IPR2014-00629
`
`
`Joseph Melnik
`Joseph Beauchamp
`H. Albert Liou
`JONES DAY
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
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