Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: February 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00113
`Patent 6,012,007
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: February 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00113
`Patent 6,012,007
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2016-00113
`Patent 6,012,007
`
`I. INTRODUCTION
`A. Background
`Nissan North America, Inc. (“Nissan” or “Petitioner”) filed a Petition
`to institute an inter partes review of claims 1–3, 5, 9, and 17–21 (“the
`challenged claims”) of U.S. Patent No. 6,012,007 (Ex. 1001, “the
`’007 patent”). Paper 2 (“Pet.”). Concurrently, Petitioner filed a Motion for
`Joinder. Paper 1 (“Mot.”). The Motion seeks to join this proceeding with
`American Honda Motor Co., Inc. v. Signal IP, Inc., Case IPR2015-01004
`(“the ʼ1004 IPR”), which concerns the ’007 patent at issue here.1 Mot. 2.
`Signal IP, Inc. (“Patent Owner”) filed a Preliminary Response (Paper
`9, “Prelim. Resp.”), as well as an Opposition to Joinder (Paper 6, “Opp.”).
`Petitioner filed a Reply to Patent Owner’s Opposition (Paper 8, “Reply”).
`For the reasons described below, we institute an inter partes review of
`claims 1–3, 5, 9, and 17–21 and grant Petitioner’s Motion for Joinder.2
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`A. Asserted Grounds of Unpatentability and Evidence of Record
`Petitioner asserts the same grounds in this proceeding as those
`instituted in the ’1004 IPR. Pet. 1, 5–6, 9–40.
`References
`Basis
`Schousek3
`§ 102
`
`Claims Challenged
`1–3, 5, 9, 17, 20, and 21
`
`
`1 This decision references the petitioner in the ’1004 IPR as “Honda.”
`2 Concurrent with this decision, we enter our decision in IPR2016-00115,
`which additionally joins Kia Motors America, Inc. (“Kia”) as a petitioner in
`the ’1004 IPR.
`3 U.S. Pat. No. 5,474,327, iss. Dec. 12, 1995 (Ex. 1004, “Schousek”).
`
` 2
`
`
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`IPR2016-00113
`Patent 6,012,007
`
`References
`Schousek and Blackburn4
`
`Basis
`§ 103
`
`Claims Challenged
`18 and 19
`
`Petitioner relies on a declaration from Kirsten Carr, Ph.D. Ex. 1003
`(“the Carr Declaration”).
`B. Decision
`We have reviewed the Petition, the Preliminary Response, and the
`
`evidence cited therein. Petitioner states, and Patent Owner does not dispute,
`that the grounds asserted in this Petition are substantively identical to the
`grounds of unpatentability instituted in the ʼ1004 IPR, and that the Carr
`Declaration is substantively identical to the declaration submitted by Honda
`in the ’1004 IPR. Mot. 6–9.
`We have considered the arguments raised by Patent Owner, including
`any differences between the arguments presented in the Preliminary
`Response and those presented in the preliminary response filed in the ’1004
`IPR, and determine on the present record that Petitioner has shown a
`reasonable likelihood of prevailing. For example, in the Preliminary
`Response, Patent Owner contends that Schousek does not allow airbag
`deployment when the relative weight parameter is above the first threshold,
`as required by claim 17, but acknowledges that in Schousek “if the seat
`sensors determine that the total weight of the seat occupant is greater than
`the minimum weight of an occupied infant seat” and “the center of weight
`distribution is determined to be not forward of a reference line—a condition
`indicative of a forward-facing infant seat—[] air bag deployment [is]
`permitted.” Prelim. Resp. 12. Patent Owner’s additional argument that the
`
`
`4 U.S. Pat. No. 5,232,243, iss. Aug. 3, 1993 (Ex. 1005, “Blackburn”).
`
` 3
`
`
`
`
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`
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`IPR2016-00113
`Patent 6,012,007
`
`maximum weight value of an occupied infant seat in Schousek is not
`equivalent to the “first threshold” (id. at 14–17) does not appear to address
`Petitioner’s contentions, which rely on Schousek’s minimum weight value to
`meet the claimed “first threshold” (see Pet. 17–18). The “lock flag”
`limitation was addressed in detail in the ’1004 Institution Decision, and we
`are apprised of no error in that analysis based on the arguments presented in
`the Preliminary Response. See Prelim. Resp. 17–21.
`Accordingly, in view of the identity of the challenges to the ’007
`patent in this Petition and in the petition in the ’1004 IPR, we institute an
`inter partes review in this proceeding on the same grounds as those on
`which we instituted inter partes review in the ’1004 IPR.
`
`III. MOTION FOR JOINDER
`The controlling statute regarding joinder for inter partes reviews 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.
`As the moving party, Petitioner bears the burden of proving that it is entitled
`to the requested relief. 37 C.F.R. § 42.20(c). To be considered timely, a
`motion for joinder must be filed no later than one month after the institution
`date of the inter partes review for which joinder is requested. 37 C.F.R.
`§ 42.122(b). The Petition in this proceeding has been accorded a filing date
`of October 30, 2015. Paper 4, 1. This date is within one month after the
`
` 4
`
`
`
`
`
`
`
`IPR2016-00113
`Patent 6,012,007
`
`date of institution in the ʼ1004 IPR, which was instituted on October 1,
`2015. The Petition, therefore, is timely.
`A motion for joinder should: (1) set forth the reasons joinder is
`appropriate; (2) identify any new ground(s) of unpatentability asserted in the
`petition; and (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review. See Kyocera Corporation v. Softview LLC,
`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`Petitioner contends that joinder will not require any modification to
`the trial schedule for the ’1004 IPR. Mot. 8–9. Petitioner further contends
`that the grounds asserted in this Petition are substantively identical to the
`grounds of unpatentability instituted in the ʼ1004 IPR, and that the Carr
`Declaration is substantively identical to the declaration submitted by Honda
`in the ’1004 IPR. Id. at 6–9. Petitioner proposes no separate filings or
`depositions of any witnesses, and will accept an “understudy” role. Id. at
`10–11. Petitioner acknowledges that it will assume a leading role only if
`Honda ceases to participate in the ’1004 IPR. Id. at 11. Petitioner represents
`that Honda has no objection to Petitioner joining that proceeding in an
`“understudy” role. Id.
`Patent Owner opposes joinder, contending that “joinder at this late
`stage would require delaying the schedule in ’1004 IPR proceeding if trial
`were instituted on the present petition.” Opp. 3. Patent Owner also
`contends that “joinder would introduce complications that would interfere
`with the just, speedy, and inexpensive resolution of the ’1004 proceeding”
`because if Honda and Patent Owner were to reach a settlement, “termination
`would not be possible . . . if the present petitioner were joined to the ’1004
`proceeding because at least one petitioner would remain.” Id. at 3.
`
` 5
`
`
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`
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`
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`IPR2016-00113
`Patent 6,012,007
`
`
`In response to Patent Owner’s concerns about the impact on the trial
`schedule in the ’1004 IPR, Petitioner “reiterate[s] . . . its willingness to file
`consolidated papers” and indicates that it “has no intention to revisit the
`already conducted discovery.” Reply 3. Petitioner clearly states its intention
`“to join the ongoing Honda IPR, adopting its status upon the grant of
`joinder.” Id.
`As discussed above, and as acknowledged by Patent Owner (Opp.
`1–2), joinder is a matter within the Board’s discretion based on the particular
`circumstances of each proceeding. In this proceeding, we are persuaded that
`Petitioner has demonstrated that joinder with the ʼ1004 IPR is appropriate.
`Based on the circumstances in this proceeding, joinder merely adds a party
`to the ʼ1004 IPR.
`We are aware of no modification to the trial schedule in the ’1004 IPR
`required by the proposed joinder.
`
`IV. CONCLUSION
`Based on the record before us, we institute an inter partes review in
`IPR2016-00113 and grant Petitioner’s motion to join IPR2015-01004.
`
`
`V. ORDER
`For the reasons given, it is
`ORDERED that an inter partes review is instituted as to:
`A.
`Claims 1–3, 5, 9, 17, 20, and 21 based on anticipation by
`Schousek; and
`B.
`Claims 18 and 19 based on obviousness over Schousek and
`Blackburn;
`
` 6
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`IPR2016-00113
`Patent 6,012,007
`
`
`FURTHER ORDERED that Nissan’s Motion for Joinder is granted,
`and Nissan is joined as a Petitioner in IPR2015-01004;
`FURTHER ORDERED that the grounds on which IPR2015-01004
`was instituted are unchanged, and no other grounds are included in the
`joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2015-01004 (Paper 12) is not modified by this Order and shall govern
`the schedule of the joined proceeding;
`FURTHER ORDERED that, throughout the IPR2015-01004
`proceeding, any paper, except for a motion that does not involve Honda,
`shall be filed by Honda as a single, consolidated filing on behalf of Honda,
`Nissan, and Kia, pursuant to the page limits set forth in 37 C.F.R. § 42.24,
`and Honda will identify each such filing as a consolidated filing;
`FURTHER ORDERED that, except as otherwise agreed by all parties,
`counsel for Honda will conduct cross-examination and other discovery on
`behalf of Honda, Nissan, and Kia, and that Patent Owner is not required to
`provide separate discovery responses or additional deposition time as a
`result of the joinder;
`FURTHER ORDERED that Honda, Nissan, and Kia collectively will
`designate attorneys to present at the oral hearing (if requested) as a
`consolidated presentation;
`FURTHER ORDERED that IPR2016-00113 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`made in IPR2015-01004;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2015-01004 and IPR2016-00113; and
`
` 7
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`IPR2016-00113
`Patent 6,012,007
`
`
`FURTHER ORDERED that the case caption in IPR2015-01004 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`PETITIONER:
`
`Tawni L. Wilhelm
`twilhelm@shb.com
`
`Patrick A. Lujin
`plujin@shb.com
`
`
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`tarek.fahmi@ascendalaw.com
`
`Holly J. Atkinson
`holly.atkinson@ascendalaw.com
`
`
`
` 8
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
` AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH AMERICA,
`INC., and KIA MOTORS AMERICA, INC.
`Petitioners,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-010045
`Patent 6,012,007
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`5 Nissan North America, Inc. and Kia Motors America, Inc. were joined as
`parties to this proceeding via Motions for Joinder in IPR2016-00113 and
`IPR2016-00115, respectively.
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