Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Date: June 25, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BENTLEY MOTORS LIMITED AND BENTLEY MOTORS, INC.,
`Petitioner,
`v.
`JAGUAR LAND ROVER LIMITED,
`Patent Owner.
`
`IPR2019-01539
`Patent RE46,828 E
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, KEVIN W. CHERRY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`Supplemental Briefing on Discretionary Denial
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 13
`Date: June 25, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BENTLEY MOTORS LIMITED AND BENTLEY MOTORS, INC.,
`Petitioner,
`v.
`JAGUAR LAND ROVER LIMITED,
`Patent Owner.
`
`IPR2019-01539
`Patent RE46,828 E
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, KEVIN W. CHERRY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`Supplemental Briefing on Discretionary Denial
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`
`INTRODUCTION
`I.
`Bentley Motors Limited and Bentley Motors, Inc. (“Petitioner”) filed
`a petition (Paper 1, “Pet.”) to institute an inter partes review of claims 21,
`24, 30, 32–34, 37, 39, 41–43, 45, and 46 (the “challenged claims”) of U.S.
`Patent No. RE46,828 E (Ex. 1001, “the ’828 patent”). 35 U.S.C. § 311.
`Jaguar Land Rover Limited (“Patent Owner”) timely filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). In its Preliminary Response, Patent
`Owner requested that the Board apply its discretion under 35 U.S.C.
`§ 314(a) to deny institution of the requested proceeding due to the advanced
`state of a parallel district court litigation1 in which the same issues have been
`presented. Prelim. Resp. 49‒52 (citing NHK Spring Co. v. Intri-Plex Techs.,
`Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential,
`designated May 7, 2019)).
`The Board denied institution pursuant to 35 U.S.C. § 314(a). Paper 9
`(March 10, 2020) (Decision Denying Institution or “DDI”). When the
`Decision Denying Institution was entered, a jury trial was scheduled for
`October 13, 2020. DDI, 14. The trial date was two months before a PTAB
`hearing would occur (if we were to institute), and five months before a
`PTAB Final Decision would issue (again, if we were to institute). Id. The
`factors weighing most in favor of discretionary denial were (1) substantial
`overlap in patent claims challenged in the Virginia District Court litigation;
`(2) overlap in the obviousness theories and references that Petitioner is
`pursuing here and in the Virginia District Court litigation; (3) the advanced
`
`
`1 Jaguar Land Rover Limited v. Bentley Motors Limited and Bentley Motors,
`Inc., Civ. No. 2:18-cv-320 (E.D. Va.) (“the Virginia District Court
`litigation”).
`
`2
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`stage of the Virginia District Court litigation; and (4) the significant
`investment by the Court and parties into the Virginia District Court
`litigation. Id. at 15.
`Petitioner filed a Request for Rehearing of the Denial Decision.
`Paper 10 (“Req. Reh’g” or “Request for Rehearing”). Concurrently
`therewith, Petitioner requested that the Board’s Precedential Opinion Panel
`(“POP”) reconsider the Denial Decision. Paper 11; Ex. 3002 (“POP
`Request”).
`On June 16, the POP declined to review the issue raised in Petitioner’s
`POP Request. Paper 12. Thus, jurisdiction over this proceeding has
`returned to the Panel to consider Petitioner’s Request for Rehearing.
`By an e-mail dated June 19, 2020 (see Ex. 3003), Petitioner contacted
`the Board to “call to the Board’s attention” a June 16, 2020 decision in Sand
`Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB, June 16, 2020), wherein the parties were
`provided an opportunity to address the factors relevant to a discretionary
`denial discussed in Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11
`(PTAB March 20, 2020 (designated Precedential May 5, 2020). Petitioner’s
`e-mail also informed us that the status of the related Virginia District Court
`litigation] “has changed since the Board’s original decision,” stating only
`that “the October 13, 2020 trial date has now been rescheduled for February
`23, 2021.” Ex. 3003. The trial date was changed based on a Joint Motion to
`Extend Deadlines filed by the parties seeking “to extend the currently
`pending deadlines set in the September 25, 2019 Scheduling Order (ECF No.
`55, "Scheduling Order"), and other currently pending deadlines, by sixty
`(60) to ninety (90) days . . . in light of complications related to the
`
`3
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`coronavirus disease (COVID-19) outbreak.” Ex. 3004. On May 5, 2020, the
`Court stated the new trial date is February 23, 2021. Ex. 3005. Another
`change since our Decision Denying Institution is that the Court held a
`remote Markman hearing on May 21, 2020 via ZoomGov. Ex. 3007 (ssee
`docket entries 344, 358). Thus, this case is still very active. See, e.g., Ex.
`3007, which is an excerpt of the District Court docket for the last 90 days as
`of June 24, 2020.
`Having reviewed Petitioner’s Request for Rehearing, we determine
`that supplemental briefing of the Request for Reconsideration is warranted
`on the application of Apple v. Fintiv to the facts of this case.
`II. ORDER
`The panel requests that the parties submit supplemental briefing, as
`set forth below, to present on the record facts in this case relevant to the
`factors discussed in Apple v. Fintiv. The supplemental briefing may be
`accompanied by documentary evidence in support of any facts asserted in
`the supplemental briefing, but may not be accompanied by declaratory
`evidence. The parties should address specifically the proximity of the
`Court’s February 23, 2021 trial date to the Board’s projected statutory
`deadline for a Final Decision if a trial were instituted.
`Accordingly, it is:
`ORDERED that Petitioner is authorized to file a supplemental brief in
`support of its Request for Reconsideration, no more than ten (10) pages and
`limited to addressing the issue of discretionary denial under 35 U.S.C.
`§ 314(a), by July 10, 2020; and it is
`FURTHER ORDERED that Patent Owner is authorized to file a
`supplemental response to Petitioner’s supplemental brief, no more than ten
`
`4
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`(10) pages and limited to the issue of discretionary denial under 35 U.S.C.
`§ 314(a), by July 24, 2020.
`
`5
`
`
`
`IPR2019-01539
`Patent RE46,828 E
`PETITIONER:
`
`Edgar Haug
`Brian Murphy
`Robert Colletti
`HAUG PARTNERS LLP
`ehaug@haugpartners.com
`bmurphy@haugpartners.com
`rcolletti@haugpartners.com
`
`PATENT OWNER:
`
`Jon Strang
`Clement Naples
`LATHAM & WATKINS LLP
`clement.naples@lw.com
`jonathan.strang@lw.com
`
`
`6
`
`
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