Trials@uspto.gov
`571.272.7822
`
`
`Paper 12
`Entered: November 25, 2014
`
`
`
`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 IPR2015-00177
`Patent 7,650,210
` ____________
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`571.272.7822
`
`
`Paper 12
`Entered: November 25, 2014
`
`
`
`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 IPR2015-00177
`Patent 7,650,210
` ____________
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`Case IPR2015-00177
`Patent 7,650,210
`
`
`I. INTRODUCTION
`
`On October 28, 2014, Hyundai Motor Company (“Hyundai”) filed
`
`a petition (“Pet.”) for inter partes review of U.S. Patent No. 7,650,210
`
`B2 (Ex. 1001, “the ’210 patent”). Paper 1. Also on October 28, 2014,
`
`Hyundai filed a Motion for Joinder (“Mot”) to join this proceeding with
`
`American Honda Motor Co., Inc. v. American Vehicular Sciences LLC, Case
`
`IPR2014-00633 (“the Honda IPR”) in which the Board already instituted
`
`inter partes review of the ’210 patent. Paper 3. Hyundai indicates that
`
`Patent Owner (“AVS”) has asserted the ’210 patent against Hyundai in an
`
`action for patent infringement, in the U.S. District Court for the Eastern
`
`District of Texas. Mot. 2. Despite having been given authorization to do so,
`
`neither American Honda Motor Co., Inc. (“Honda”), the Petitioner in the
`
`Honda IPR, nor AVS filed an opposition to Hyundai’s Motion for Joinder.
`
`In a separate decision, entered concurrently herewith, we institute trial in this
`
`proceeding. The Motion for Joinder is granted.
`
`II. DISCUSSION
`
`An inter partes review may be joined with another inter partes
`
`review. The statutory provision governing joinder of inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(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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`2
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`Case IPR2015-00177
`Patent 7,650,210
`
`
`As the movant, Hyundai bears the burden to show that joinder is
`
`appropriate. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth
`
`the reasons joinder is appropriate; (2) identify any new grounds of
`
`unpatentability asserted in the petition; (3) explain what impact (if any)
`
`joinder would have on the trial schedule for the existing review; and (4)
`
`address specifically how briefing and discovery may be simplified. See
`
`Frequently Asked Question (“FAQ”) H5 on the Board’s website at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`Hyundai represents that it does not raise any issues that are not
`
`already before the Board and Hyundai’s Petition is based on the same
`
`grounds and same combinations of prior art as those on which trial has been
`
`instituted in the Honda IPR. Mot. 4. Hyundai asserts even less impact
`
`would result from joinder because “Hyundai has not raised one of the
`
`grounds on which a trial was instituted (anticipation of Claims 1, 8, 15, and
`
`16 under 35 U.S.C. § 102(a) by Fry, discussed at pages 24-26 of Paper 8 in
`
`the Honda IPR).” Id. Hyundai also represents that its arguments are
`
`“identical” to those made by Honda in the Honda IPR. Id. Hyundai further
`
`indicates that with respect to the grounds it has proposed, it relies on the
`
`same declaration testimony of Mr. Christopher Wilson, albeit submitted in a
`
`separate declaration, as was relied on by Honda for those same grounds. Id.
`
`Under these circumstances, Hyundai indicates that joinder would not
`
`not require any analysis beyond what AVS is already required to undertake
`
`to respond to Honda’s petition. Id. at 5. Hyundai states that “AVS should
`
`not need any additional discovery of Mr. Wilson beyond that which it has
`
`already asked for in the Honda IPR.” Mot. 4.
`
`
`
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`3
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`Case IPR2015-00177
`Patent 7,650,210
`
`
`Hyundai further agrees to have consolidated filings with Honda, in
`
`case of joinder, to minimize burden and impact of joinder. Mot. 1.
`
`Specifically, Hyundai indicates it is willing to adopt the same procedures.
`
`Mot. 5.
`
`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).
`
`
`
`
`
`Mot. 5.1 Hyundai further states: “Given that Hyundai and Honda will be
`
`addressing the same prior art and the same bases for rejection using the same
`
`expert, Hyundai does not envision any differences in position with Honda,
`
`and does not believe that it is likely to make any separate filings.” Id. at 5-6.
`
`Despite having been authorized to file a stipulation to further limit
`
`Hyundai’s participation (Order – Conduct of the Proceedings (Paper 5)), the
`
`parties have not filed such a stipulation.
`
`Given the representations of Hyundai as noted above, we are
`
`persuaded that the impact of joinder on the Honda IPR will be minimal.
`
`Also, joinder will enhance efficiency, avoid duplication of efforts, and
`
`reduce the potential of inconsistency among proceedings.
`
`
`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.
`
`
`
`4
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`
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`Case IPR2015-00177
`Patent 7,650,210
`
`
`
`It is
`
`III. ORDER
`
`ORDERED that IPR2015-00177 is joined with IPR2014-00633;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`
`trial in the joined proceedings are the same as those for which trial was
`
`instituted in IPR2013-00633;
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`IPR2013-00633 is unchanged, and as modified by any authorized stipulation
`
`by the parties;
`
`FURTHER ORDERED that, in the joined proceeding, Honda and
`
`Hyundai will file papers, except for motions which do not involve the other
`
`party, as consolidated filings; Honda will identify each such filing as a
`
`Consolidated Filing and will be responsible for completing all consolidated
`
`filings; Hyundai may file an additional paper, concurrent with each
`
`consolidated filing, not to exceed seven pages, which may address only
`
`points of disagreement with positions asserted in the consolidated filing;
`
`any such filing by Hyundai must specifically identify and explain each point
`
`of disagreement; Hyundai may not file separate arguments in support of
`
`points made in Honda’s consolidated filing;
`
`FURTHER ORDERED that, in addition to responding to any
`
`consolidated filing, AVS may respond separately, but concurrently, to any
`
`separate Hyundai filing; any such response by AVS to a Hyundai filing may
`
`not exceed seven pages in length and is limited to issues raised in the
`
`Hyundai filing;
`
`FURTHER ORDERED that Honda and Hyundai will designate
`
`
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`5
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`
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`Case IPR2015-00177
`Patent 7,650,210
`
`attorneys to conduct the cross-examination of any witnesses produced by
`
`AVS and the redirect of any witnesses produced by Honda or Hyundai
`
`within the time frame normally allotted by the rules for one party; Honda
`
`and Hyundai will not receive any separate cross-examination or redirect
`
`time;
`
`FURTHER ORDERED that any requests by any party for additional
`
`deposition time must be brought before the Board;
`
`FURTHER ORDERED that the case caption in IPR2014-00633 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`sample on the next page; and
`
`FURTHER ORDERED that this proceeding (IPR2015-00177) is
`
`terminated under 37 C.F.R. § 42.72 and all further filings in the joined
`
`proceeding shall be made in IPR2014-00633.
`
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`6
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`
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`Case IPR2015-00177
`Patent 7,650,210
`
`
`
`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 IPR2014-00633
`Case IPR2015-00177
`Patent 7,650,210 B2
`____________
`
`
`
`7
`
`
`
`Case IPR2015-00177
`Patent 7,650,210
`
`
`
`
`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
`
`PETITIONER in IPR2014-00633
`
`
`Joseph Melnik
`Joseph Beauchamp
`H. Albert Liou
`JONES DAY
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`
`
`
`8
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`
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