Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper: 9
`Entered: November 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SL CORPORATION,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01368
`Patent 7,241,034 C1
`____________
`
`Before MICHAEL P. TIERNEY, RAMA G. ELLURU, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`Granting Motion for Joinder
`37 C.F.R. §§ 42.5, 42.122(b)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper: 9
`Entered: November 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SL CORPORATION,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01368
`Patent 7,241,034 C1
`____________
`
`Before MICHAEL P. TIERNEY, RAMA G. ELLURU, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`Granting Motion for Joinder
`37 C.F.R. §§ 42.5, 42.122(b)
`
`
`
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`
`SL Corporation (“Petitioner” or “SL”) filed a Petition (Paper 5,
`“Pet.”)1 requesting inter partes review of claims 3–26 and 28–35 (the
`“challenged claims”) of U.S. Patent No. 7,241,034 C1 (Ex. 1001, “the ’034
`Patent”) pursuant to 35 U.S.C. §§ 311–319. SL also filed a Motion for
`Joinder (Paper 3, “Mot.”), seeking to join this case, under 35 U.S.C.
`§ 315(c), with Koito Manufacturing Co., Ltd. v. Adaptive Headlamp
`Technologies, Inc., Case IPR2016-00079 (“the Koito IPR” and “Petitioner
`Koito”), which was instituted on May 5, 2016. See IPR2016-00079 Paper
`11 (instituting inter partes review of claims 3–26, 28–32, and 35 of the ’034
`Patent).
`Patent Owner Adaptive Headlamp Technologies, Inc. (“Patent
`Owner” or “Adaptive”) did not file an Opposition to the Motion for Joinder.
`Adaptive also did not file a Preliminary Response to the Petition. In
`addition, SL attests that Koito does not oppose joinder. Mot. 7.
`For the reasons set forth below, we conclude that SL’s Petition
`warrants institution of inter partes review as to claims 3–26, 28–32, and 35
`of the ’034 Patent. This determination is consistent with our Institution
`Decision in the Koito IPR. See IPR2016-00079 Paper 11, 39. We also
`determine that joinder is appropriate under the circumstances present here.
`Accordingly, on this record, we institute inter partes review as to
`claims 3–26, 28–32, and 35 of the ’034 Patent, and Grant SL’s Motion for
`Joinder, and join SL as a Petitioner in IPR2016-00079. In view of our
`
`
`1 SL filed its original Petition (Paper 2) on July 6, 2016. SL subsequently
`filed a Corrected Petition (Paper 5) on July 23, 2016. All citations to the
`Petition in this document refer to the Corrected Petition (Paper 5).
`
`2
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`decision on joinder, we also terminate the present proceeding, IPR2016-
`01368.
`
`I. PETITION FOR INTER PARTES REVIEW
`The parties indicate that the ’034 patent is being asserted in a number
`of district court proceedings. Pet. 2–3; Paper 7, 3. As discussed above, the
`’034 Patent is the subject of the Koito IPR. The ’034 Patent is also the
`subject of a separate inter partes review proceeding filed by SL:
`SL Corporation v. Adaptive Headlamp Technologies, Inc., Case IPR2016-
`00193, which was instituted on June 7, 2016. See IPR2016-00193 Paper 10
`(instituting inter partes review of claims 7–10, 12–21, 23, 24, and 28–39 of
`the ’034 Patent).
`In the Koito IPR, we instituted inter partes review of claims 3–26,
`28–32, and 35, of the ’034 patent on the same grounds of unpatentability
`asserted in the present Petition:
`
`Claim(s)
`7–9, 13–18, 20,
`21, 23, 24, 28,
`29, 31, 32, and
`35
`10
`
`References
`Statutory Basis
`35 U.S.C. § 103(a) Kato2 and Takahashi3
`
`35 U.S.C. § 103(a) Kato, Takahashi, and Mori4
`
`
`2 Japan Patent Application Publication H10-324191 (pub. Dec. 8, 1998)
`(Exs. 1006, 1007).
`3 UK Patent Application GB 2 309 774 A (pub. Aug. 6, 1997) (Ex. 1008).
`4 Japan Patent Application Publication H7-164960 (pub. June 27, 1995)
`(Exs. 1009, 1010).
`
`3
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`
`Claim(s)
`11 and 19
`
`12
`
`References
`Statutory Basis
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Uguchi5
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Ishikawa6
`35 U.S.C. § 103(a) Kato, Takahashi, and Panter7
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Suzuki8
`35 U.S.C. § 103(a) Kato, Takahashi, and
`Okuchi10
`35 U.S.C. § 103(a) Kato and Uguchi
`3 and 6
`35 U.S.C. § 103(a) Kato, Uguchi, and Ishikawa
`4
`35 U.S.C. § 103(a) Kato, Uguchi, and Takahashi
`5
`Pet. 7; Mot. 3; IPR2016-00079 Paper 11, 6.
`
`22
`25, 26
`
`309
`
`
`5 Japan Patent Application Publication H01-223042 (pub. Sept. 6, 1989)
`(Exs. 1011, 1012).
`6 M. Ishikawa et al, Auto-Levelling Projector Headlamp System with
`Rotatable Light Shield, SAE TECHNICAL PAPER SERIES NO. 930726, (1993)
`(Ex. 1013).
`7 U.S. Patent No. 5,751,832 (iss. May 12, 1998) (Ex. 1014).
`8 Japan Patent Application Publication H6-335228 (pub. Dec. 2, 1994)
`(Exs. 1015, 1016).
`9 Koito also asserted that claims 33 and 34 are invalid under 35 U.S.C.
`§ 103(a) over Kato, Takahashi, and Okuchi (see IPR2016-00079 Paper 2, 6),
`and SL repeats this contention in its Petition (see Pet. 7). We decided,
`however, that Koito’s Petition did not demonstrate a reasonable likelihood
`that Koito would prevail on its challenge to claims 33 and 34. IPR2016-
`00079 Paper 11, 33.
`10 U.S. Patent No. 6,193,398 B1 (iss. Feb. 27, 2001) (Ex. 1017).
`
`4
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`
`SL represents in its Petition that it is asserting the same challenges
`that were asserted by Koito in the Koito IPR:
`inter partes review petition presents
`The
`instant
`challenges which are identical to those on which trial was
`instituted in IPR2016-00079. Paper No. 11. The petition in the
`instant case copies verbatim1 the challenges set forth in the
`petition in IPR2016-00079 (Paper No. 2) (“Koito petition”) and
`relies upon the same evidence, including the same expert
`declaration. . . .
`1To meet the new word limits of 37 CFR §42.24 which
`went into effect on May 2, 2016, Petitioner has omitted
`Sections III. E and F of the Koito petition addressing
`potential issues under 35 U.S.C. §112, ¶6 (and references
`to the same), neither of which was addressed or referenced
`in the institution decision.
`Pet. 1 & n.1. We have reviewed SL’s Petition and find that it raises
`substantially the same arguments and evidence that were proffered by Koito
`in the Koito IPR. Compare Pet. 8–57 with IPR2016-00079 Paper 11, 7–38.
`Although SL has submitted a declaration from Mr. Harvey Weinberg (Ex.
`1019, “Weinberg Declaration”) that was not offered during the Koito IPR,
`the Weinberg Declaration merely adopts the opinions set forth in the
`Declaration of Ralph V. Wilhelm, Ph.D. (“Wilhelm Declaration”) from the
`Koito IPR. Ex. 1019 ¶¶ 7–11.
`In view of the fact that SL’s Petition “copies verbatim the challenges
`set forth in the petition in [the Koito IPR]” (Pet. 1) and raises substantially
`the same evidence and arguments as the petition in the Koito IPR, and the
`fact that Adaptive (which did not file a preliminary response) has not raised
`any additional patentability arguments in this proceeding, we incorporate
`herein our analysis from the Institution Decision in the Koito IPR.
`IPR2016-00079, Paper 11, 6–38. For the same reasons discussed in our
`
`5
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`Institution Decision in the Koito IPR, we determine that SL has
`demonstrated a reasonable likelihood of prevailing on its obviousness
`challenges to claims 3–26, 28–32, and 35. IPR2016-00079 Paper 11, 6–39.
`As we explained in our Institution Decision in the Koito IPR, the Koito
`Petition did not demonstrate a reasonable likelihood that Koito would
`prevail on its obviousness challenges to claims 33 and 34. Id. at 31–33.
`Accordingly, for the same reasons discussed in our Institution Decision in
`the Koito IPR, SL’s Petition does not demonstrate a reasonable likelihood
`that SL would prevail on its obviousness challenges to claims 33 and 34.
`For the foregoing reasons, we institute an inter partes review of claims 3–
`26, 28–32, and 35 in this proceeding on the same grounds upon which we
`instituted trial in IPR2016-00079. We do not institute an inter partes review
`as to claims 33 and 34, or on any other grounds.
`
`II. MOTION FOR JOINDER
`In the Motion for Joinder, SL seeks “joinder with the inter partes
`
`review concerning the same patent in Koito Manufacturing Co., Ltd. v.
`Adaptive Headlamp Technologies, Inc., Case No. IPR2016-00079 . . ., which
`was instituted on May 5, 2016.” Mot. 3. SL filed its Motion for Joinder on
`July 6, 2016. Because SL’s Motion for Joinder was filed more than 30 days
`after our May 5, 2016, Institution Decision in the Koito IPR (see IPR2016-
`00079 Paper 11, 1), the Motion is not timely under 37 C.F.R. § 42.122(b).
`See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed, as a
`motion under § 42.22, no later than one month after the institution date of
`any inter partes review for which joinder is requested.”). SL, however,
`requests that we invoke our authority under 37 C.F.R. § 42.5(b) to waive the
`time limit of 37 C.F.R. § 42.122(b). Mot. 7–8. Patent Owner does not
`
`6
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`oppose SL’s Motion for Joinder. Pursuant to 37 C.F.R. § 42.5, we exercise
`our discretion to waive the one-month requirement of § 42.122(b) because
`we discern no prejudice that would result from doing so.
`
`The Board, acting on behalf of the Director, has the discretion to join
`a party to a pending inter partes review where the conditions of 35 U.S.C.
`§ 315(c) are met. See 35 U.S.C. § 315(c); see also 37 C.F.R. § 42.4(a) (“The
`Board institutes the trial on behalf of the Director.”). Specifically, 35 U.S.C.
`§ 315(c) provides:
`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 partes
`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). A motion for joinder
`should (1) set forth reasons why 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
`Kyocera Corp. v. Softview LLC, Case IPR2013-00004, Paper 15 (PTAB
`Apr. 24, 2013).
`As noted above, we instituted inter partes review of claims 3–26, 28–
`32, and 35 of the ’034 Patent in the Koito IPR. See generally IPR2016–
`00079 Paper 11. The time for Adaptive to file a Preliminary Response in
`this proceeding has now expired, and we have determined above that SL’s
`Petition warrants institution of an inter partes review of these same claims.
`
`7
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`Accordingly, the conditions of 35 U.S.C. § 315(c) are satisfied, and we must
`consider whether to exercise our discretion to join SL as a Petitioner in the
`Koito IPR.
`In support of its Motion for Joinder, SL argues as follows:
`(1) joinder is appropriate because it will promote efficient
`determination of the validity of the ‘034 Patent without prejudice
`to the Patent Owner, Adaptive Headlamp Technologies []; (2) SL
`Corp.’s Petition includes grounds that are identical to the ground
`instituted in the Koito IPR; (3) joinder would not affect the
`pending schedule in the Koito IPR nor increase the complexity
`of that proceeding, minimizing costs; and (4) SL Corp. is willing
`to agree to consolidated filings with Koito, that is, to accept an
`understudy role, to minimize burden and schedule impact.
`Mot. 1. As discussed above, Adaptive did not file an Opposition to the
`Motion for Joinder.
`
`On this record, we agree that joinder will promote the efficient
`determination of the validity of the ’034 Patent without causing prejudice to
`Adaptive. In the absence of joinder, SL and Adaptive would be required to
`litigate in this proceeding the same issues that are already before the Board
`in the Koito IPR. This would waste the parties’ and the Board’s resources,
`and would impose additional and unnecessary burdens on Adaptive.
`Granting SL’s Motion for Joinder will avoid the waste of resources and
`additional burdens on Adaptive that would result from concurrent
`proceedings involving the same issues.
`
`We also find that SL’s Petition does not raise any new grounds of
`unpatentability regarding the claims on which we instituted trial in the Koito
`IPR, and does not contain any new arguments with respect to the claims on
`which we denied institution in the Koito IPR. As discussed above, we agree
`
`8
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`that the arguments raised in SL’s Petition are substantially the same as
`arguments that were raised in the Koito IPR.
`
`We further find that joinder is unlikely to have any impact on the trial
`schedule in the Koito IPR. SL does not request any schedule adjustments in
`the Koito IPR. Mot. 5. Moreover, SL has agreed to assume a limited role in
`the Koito IPR:
`As long as Koito remains in the joined IPRs, SL Corp.
`agrees to remain in a circumscribed role without a separate
`opportunity to actively participate. Thus, SL Corp. will not file
`additional written submissions, nor will it pose questions at
`depositions or argue at oral hearing without the prior permission
`of Koito. Only in the event that Koito settles will the SL Corp.
`seek to become active in the joined IPRs.
`Id. SL’s willingness to assume a limited role in the Koito IPR enhances the
`efficiency gains that will result from joinder.
`
`For the foregoing reasons, we grant SL’s Motion for Joinder, and join
`SL as a Petitioner in the Koito IPR. We also terminate the present
`proceeding.
`As a Petitioner in the Koito IPR, SL shall adhere to the existing
`schedule in the Koito IPR. In accordance with the representations SL made
`in its Motion for Joinder, SL shall not “actively participate” in the Koito
`IPR, absent prior leave from the Board. See Mot. 5. SL shall not “file
`additional written submissions,” shall not “pose questions at depositions,”
`and shall not “argue at oral hearing,” absent prior leave from the Board. See
`id. The page limits and word counts set forth in 37 C.F.R. § 42.24 shall
`apply to all joint filings.
`SL is bound by any discovery agreements, including deposition
`arrangements, between Koito and Adaptive, and SL shall not seek any
`
`9
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`discovery beyond that sought by Koito. Adaptive shall not be required to
`provide any additional discovery or deposition time as a result of joinder.
`The Board expects Koito and SL to resolve any disputes between
`them and to contact the Board only if such matters cannot be resolved.
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that trial is instituted in IPR2016-01368 with respect to
`claims 3–26, 28–32, and 35, on the grounds set forth in our Institution
`Decision in IPR2016-00079 (see IPR2016-00079 Paper 11, 39);
`FURTHER ORDERED that trial is not instituted as to claims 33 or
`34, or on any other asserted ground of unpatentability;
`FURTHER ORDERED that SL’s Motion for Joinder (Paper 3) is
`granted;
`FURTHER ORDERED that SL is joined as a Petitioner in IPR2016-
`00079;
`FURTHER ORDERED that the instant proceeding, IPR2016-01368,
`is terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`proceeding shall be made only in IPR2016-00079;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which a trial was instituted in IPR2016-00079 are unchanged;
`FURTHER ORDERED that the current Scheduling Order for
`IPR2016-00079 (Paper 12) shall continue to govern that proceeding;
`FURTHER ORDERED that SL shall adhere to the existing schedule
`in IPR2016-00079;
`
`10
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`
`FURTHER ORDERED that absent prior leave from the Board, SL
`shall not actively participate in IPR2016-00079, file additional written
`submissions, pose questions at depositions, or argue at oral hearing;
`FURTHER ORDERED that SL is bound by any discovery agreements
`(including deposition arrangements) between Koito and Adaptive, that SL
`shall not seek any discovery beyond that sought by Koito, and that Adaptive
`shall not be required to provide any additional discovery or deposition time
`as a result of joinder;
`FURTHER ORDERED that absent prior authorization from the
`Board, Koito will file all papers in the joined proceeding jointly on behalf of
`Koito and SL;
`FURTHER ORDERED that the page limits and word counts set forth
`in 37 C.F.R. § 42.24 will apply to all joint filings;
`FURTHER ORDERED that the case caption in IPR2016-00079 shall
`be changed to reflect the joinder of SL as a Petitioner in accordance with the
`attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2016-00079.
`
`
`11
`
`
`
`IPR2016-01368
`Patent 7,241,034 C1
`
`FOR PETITIONERS:
`
`Peter J. Cuomo
`Kongsik Kim
`Serge Subach
`MINTZ LEVIN COHN FERRIS GLOVSKY & POPEO, P.C.
`pjcuomo@mintz.com
`kkim@mintz.com
`ssubach@mintz.com
`
`Samuel Borodach
`Michael Autuoro
`John Pegram
`John Goetz
`FISH & RICHARDSON P.C.
`IPR10973-0232IP1@fr.com
`PTABInbound@fr.com
`
`FOR PATENT OWNER:
`
`Brett M. Pinkus
`Richard Wojcio
`FRIEDMAN, SUDER & COOKE
`pinkus@fsclaw.com
`wojcio@fsclaw.com
`
`
`12
`
`
`
`Example Case Caption
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`KOITO MANUFACTURING CO., LTD, and
`SL CORPORATION,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00079111
`Patent 7,241,034 C1
`____________
`
`
`
`
`
`
`
`
`
`
`111Case IPR2016-01368 has been joined with this proceeding.
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