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
`U.S. Patent No. RE46,828
`
`
`
`PETITIONER’S SUPPLEMENTAL BRIEF
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`BENTLEY MOTORS LIMITED
`and
`BENTLEY MOTORS, INC.
`Petitioner
`
`v.
`
`JAGUAR LAND ROVER LIMITED
`Patent Owner
`
`
`
`
`IPR2019-01539
`U.S. Patent No. RE46,828
`
`
`
`PETITIONER’S SUPPLEMENTAL BRIEF
`
`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`TABLE OF CONTENTS
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`
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`
`
`THE LIKELIHOOD OF THE DISTRICT COURT’S
`FEBRUARY 2021TRIAL DATE BEING
`RESCHEDULED TO A TIME PROXIMATE TO, OR
`EVEN AFTER, THE BOARD’S PROJECTED
`DEADLINE FOR A FINAL WRITTEN DECISION .......................... 1
`
`THE LIKELIHOOD OF A STAY OF THE PARALLEL
`DISTRICT COURT ACTION .............................................................. 4
`
`THE REAL PARTIES IN INTEREST ARE NOT
`DEFENDANTS IN DISTRICT COURT .............................................. 6
`
`THERE IS MINIMAL OVERLAP BETWEEN THE IPR
`PETITION AND DISTRICT COURT CASE ...................................... 7
`
`THERE HAS BEEN LIMITED INVESTMENT IN THE
`INVALIDITY ISSUES BY THE DISTRICT COURT
`AND THE PARTIES ............................................................................ 7
`
`OTHER CIRCUMSTANCES THAT IMPACT THE
`BOARD’S EXERCISE OF DISCRETION,
`INCLUDING THE MERITS OF THE IPR PETITION ....................... 8
`
`
`
`
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`
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`– i –
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`02001050.DOCX
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ...............................1, 10
`
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) ..................................................................................... 9
`
`In re: TLI Commc'ns Inc. Patent Litig.,
`No. 1:14-cv-02534, 2014 U.S. Dist. LEXIS 182206
`(E.D. Va. Aug. 11, 2014) ................................................................................. 5
`
`Motor Vehicle Mfrs. Ass’n v. State Farm Mut.,
`463 U.S. 29 (1983)........................................................................................... 9
`
`NHK Spring Co. v. Intri-Plex Technologies, Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) .................................1, 8
`
`SAS Institute Inc. v Iancu,
`138 S. Ct. 1348 (2018) .................................................................................1, 8
`
`Statutes
`35 U.S.C. § 315(e)(2) ................................................................................................. 6
`
`5 U.S.C. § 706(2)(A) .................................................................................................. 9
`
`5 U.S.C. § 706(2)(B) .................................................................................................. 9
`
`5 U.S.C. § 706(2)(C) .................................................................................................. 9
`
`5 U.S.C. § 706(2)(D) .................................................................................................. 9
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`– ii –
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`02001050.DOCX
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`
`
`
`
`
`1002B
`
`1002C
`
`Bentley Exhibits for IPR2019-1539
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`– iii –
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`02001050.DOCX
`
`Exhibit
`Number
`1001
`
`1002A
`
`Exhibit Name
`U.S. Patent No. RE 46,828 (“the ’828 patent”)
`Bantle/Bott, The Porsche 959-Group B – a Very Special Automobile
`– Part 1, Automobiltechnische Zeitschrift 88 (May, 1986) No. 5, pp.
`265-270 (“ATZ”)
`Bantle/Bott, The Porsche 959-Group B – a Very Special Automobile
`– Part 2, ATZ 88 (June, 1986) No. 6, pp. 353-356
`Bantle/Bott, The Porsche 959-Group B – a Very Special Automobile
`– Part 3, ATZ 88 (July/August 1986) No. 7/8, pp. 407-413
`Bantle/Bott, The Porsche 959-Group B – a Very Special Automobile
`1002D
`– Part 4, ATZ 88 (September 1986) No. 9, pp. 509-513
`1002E
`Public Availability Statement from the British Library
`1003
`Porsche 959 Driver’s Manual
`1004
`Expert Declaration of Dr. Glenn R. Bower
`1005
`GB 2,273,580
`1006
`U.S. Patent No. 6,044,318
`1007
`1997 Ford Expedition Owner’s Guide
`1008A
`2001 BMW 7-Series Owner’s Manual
`2001 BMW 7-Series Owner’s Manual, Service and Warranty
`1008B
`Information
`1009
`2002 Montero Sport Owner’s Manual
`1010
`Intentionally Left Blank
`1011
`Intentionally Left Blank
`1012
`Hummer H2 Media Page, Internet Archive, December 21, 2011
`1013
`2003 Hummer H2 Owner’s Manual
`1014A H2 Chassis Article from Hummer H2 Press Kit
`1014B H2 Exterior Article from Hummer H2 Press Kit
`1014C H2 Interior Article from Hummer H2 Press Kit
`1014D H2 Overview Article from Hummer H2 Press Kit
`1014E H2 Powertrain Article from Hummer H2 Press Kit
`1014F
`H2 Safety Article from Hummer H2 Press Kit
`1014G H2 Specs Article from Hummer H2 Press Kit
`1015
`Affidavit of Christopher Butler from the Internet Archives regarding
`the H2 Powertrain Article (the Hummer Article )
`
`
`
`Exhibit
`Number
`1016
`
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`1034
`1035
`1036
`1037
`
`1038
`1039
`1040
`1041
`1042
`
`1043
`
`Exhibit Name
`Mitsubishi Motors Press Release – MMC launches Lancer Evolution
`VII (January 26, 2001)
`2001 Mitsubishi Lancer Evolution VII Press Information
`2000 Range Rover Owner’s Handbook
`2001 Chevy Tahoe Owner’s Manual
`2001 Mercedes C-Class Operator’s Manual
`Prosecution File History for the ’828 patent
`Prosecution File History for the ’776 patent
`U.S. Patent No. 7,349,776
`EPO File History for 3,252,006
`GB 2,154,763
`U.S. Patent No. 5,941,614
`U.S. Patent No. 6,280,859
`U.S. Patent No. 5,997,108
`Phillips, David, Hummer H2 SUT concept storms N.Y., Automotive
`News (April 10, 2018)
`Hans-Martin Streib and Hubert Bischof, Electronic Throttle Control
`(ETC): A Cost Effective System for Improved Emissions, Fuel
`Economy, and Driveability, SAE International 960338 (1996).
`Constantine, Chris, This Paris-Dakar Porsche 959 Rally Car May
`Bring in $3.4 Million at Auction, The Drive (June 30, 2018)
`Garrick Forkenbrock et al., A Comprehensive Light Vehicle Antilock
`Brake System Test Track Performance Evaluation, SAE
`INTERNATIONAL 1999-01-1287 (1999).
`2003 Lexus GX 470 Owner’s Manual
`2002 Nissan Pathfinder Owner’s Manual
`2002 Infinity QX4 Owner’s Manual
`Ford Press Release (Feb. 8, 1999)
`Frank, Michael, The Best of the New York Auto Show, Forbes (April
`16, 2001)
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`Honda News, 1990 Honda Accord – Drivetrain (April 1, 1989)
`
`Mitsubishi-Motors Pajero, https://www.mitsubishi‐
`
`motors.com/en/innovation/history/detail/ (1991)
`Mitsubishi Pajero Showroom Catalog
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`– iv –
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`02001050.DOCX
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`
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`Exhibit
`Number
`1044
`1045
`
`1046
`1047
`1048
`
`1049
`1050
`1051
`1052
`1053
`1054
`1055
`
`1056
`1057
`1058
`1059
`1060
`1061
`1062
`
`1063
`
`1064
`
`1065
`
`1066
`
`Exhibit Name
`Mitsubishi Facts and Figures (2005)
`Autocar Magazine, Twin Test Mitsubishi EVO VII vs. Subaru Impreza
`STi, (June 13, 2001)
`Autocar Magazine, Seventh heaven is a new Evo (Feb.14, 2001)
`BestCar Special Edition, Lancer Evolution VII Close-Up
`Car Magazine, Seven samurai Number VII is the most grown-up
`complete Evo ever. But don’t write off for a pipe and slippers yet…
`(Apr. 2001)
`Car Magazine, BMW v. EVO VII (June 2001)
`Autocar Magazine, Mitsubishi EVO Extreme (Aug. 15, 2001)
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`2002 Detroit Auto Show, Part 1, 2002 North American International
`Auto Show (Jan.14, 2002)
`Autocar Magazine, Survival of the fastest (Mar. 7, 2001)
`Motor Trend, BMW 740i Sport (June, 1999)
`Automobile Magazine, Mitsubishi Lancer Evolution VII (May 2001)
`LEVOLANT 30 (May, 2001)
`Lancer Evolution in 4WD Turbo (October, 2001)
`Lancer Evolution VII Technical Information Manual (April, 2001)
`Order as Modified by Judge Edward M. Chen granting Stipulation
`Amending Second Amended Case Management and Pretrial Order
`For Jury Trial, Intri-Plex Tech., Inc. v. NHK Int’l Corp., No.17-
`01097 (N.D. Cal. Aug. 7, 2019), ECF No. 254.
`Decision - Granting Request for Rehearing and Instituting Inter
`Partes Review, Sand Revolution II, LLC v. Cont. Intermodal Group-
`Trucking LLC, IPR2019-0139 (P.T.A.B. June 16, 2020), Paper No.
`24.
`Order granting Motion to Extend Deadlines, Jaguar Land Rover v.
`Bentley Motors Limited, No. 18-320 (E.D. Va. Apr. 9, 2020), ECF.
`No. 333.
`Transcript of Markman proceedings held on 5/21/20, before Chief
`Judge Mark S. Davis, Jaguar Land Rover v. Bentley Motors Limited,
`No. 18-320 (E.D. Va. May 14, 2020), ECF. No. 358.
`In re: Court Operations Under the Exigent Circumstances Created by
`
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`– v –
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`02001050.DOCX
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`Exhibit
`Number
`
`1067
`
`1068
`
`1069
`
`1070
`
`1071
`
`Exhibit Name
`the Outbreak of Coronavirus Disease 2019 (COVID-19): Phased
`Expansion of Court Operations, General Order No. 2020-16, Case
`No. 2:2mc7 (E.D. Va. May 26, 2020)
`In re: Court Operations Under the Exigent Circumstances Created by
`the Outbreak of Coronavirus Disease 2019 (COVID-19): Revised
`Schedule for the Resumption of Criminal Jury Trials, General Order
`No. 2020-19, Case No. 2:2mc7 (E.D. Va. Jun. 30, 2020)
`Transcript of Status Hearing Proceedings held on 9/17/19, Jaguar
`Land Rover v. Bentley Motors Limited, No. 18-320 (E.D. Va.
`Sept.19, 2019), ECF. No. 54.
`Objections to a Portion of the Order re Order on Motion to
`Amend/Correct, Jaguar Land Rover v. Bentley Motors Limited, No.
`18-320 (E.D. Va. May 14, 2020), ECF. No. 342.
`Affidavit of Proof of Service, Jaguar Land Rover v. Bentley Motors
`Limited, No. 18-320 (E.D. Va. Sept. 18, 2018), ECF. No. 9.
`Defendants’ First Amended Preliminary Invalidity Contentions,
`Jaguar Land Rover v. Bentley Motors Limited, No. 18-320 (E.D. Va.
`Jan. 17, 2020)
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`– vi –
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`02001050.DOCX
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`Pursuant to the Board’s June 25, 2020 Order (Paper 13), Petitioner submits
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`this Supplemental Brief on the application of Apple v. Fintiv to the facts of this
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`case. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20,
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`2020) (precedential). The Apple v. Fintiv factors favor institution, especially in
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`view of the indefinite continuance of all civil jury trials in the Eastern District of
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`Virginia, Petitioner’s commitment to immediately move for a stay upon institution,
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`the fact that four real parties in interest are not defendants in the district court
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`action, and the strength of the merits of the Petition. Petitioner also maintains that
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`the procedural posture of a parallel district court action can only support denial of
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`institution when there is an independent statutory reason that supports the denial,
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`which is not the case here. SAS Institute Inc. v Iancu, 138 S. Ct. 1348, 1355-56
`
`(2018); see also NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752,
`
`Paper 8 (P.T.A.B. Sept. 12, 2018) (precedential). Turning first to the proximity of
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`the District Court trial date to a projected deadline for the Board’s Final Decision
`
`
`
`The Likelihood of the District Court’s February 2021Trial Date
`Being Rescheduled to A Time Proximate to, or Even After, the
`Board’s Projected Deadline For A Final Written Decision
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`It is not uncommon for district court Scheduling Orders to get amended and
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`for trial dates to get pushed back. For instance, in NHK Spring, the court extended
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`the trial date numerous times, pushing it from well before the date for a final
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`written decision to several months after it. EX1062. In the recent Sand Revolution
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`02001050.DOCX
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`
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`case, the jury trial was moved to February 8, 2021, four months before the Board’s
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`one-year final decision deadline. The Board still instituted and noted “it is unclear
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`that the court in the related district court litigation will adhere to any currently
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`scheduled jury trial date” and deemed the four month difference to be “in relatively
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`close proximity to the expected final decision.” EX1063 at 9.
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`Here, the District Court rescheduled the trial to February 23, 2021 after the
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`parties agreed to extend the currently pending deadlines by sixty (60) to ninety (90)
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`days, in light of complications related to the COVID-19 outbreak. EX1064 at 1.
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`The rescheduled trial date may very well be further postponed due to COVID-19
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`health concerns in view of Judge Davis’s observations after the Markman hearing
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`and his subsequent May 26 and June 30, 2020 General Orders.
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`At the conclusion of the May 21 Markman hearing, Judge Davis told the
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`parties it would be a “long time” before any civil trial would take place in the
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`Eastern District of Virginia in view of the COVID-19 pandemic and the Speedy
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`Trial Act requirement for criminal trials.
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`“What that means for civil cases is it's going to be a long
`time before any trial can take place. I don't like saying
`that, because this is the Eastern District of Virginia, and
`we try to keep our civil cases moving. But it is the
`unfortunate reality of the situation in which we find
`ourselves. And so I think once I do have an opinion for
`you, I would very much like for you to go back to either
`a settlement conference or make your own arrangements
`for some kind of mediation or other alternative dispute
`resolution.”
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`02001050.DOCX
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`EX1065 at 139. (emphasis added). The direction from Judge Davis that civil trials
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`are being delayed and that the parties should make arrangements for mediation or
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`some other alternative dispute resolution method was reinforced a few days later.
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`On May 26, Judge Davis issued General Order No. 2020-16, which states that “no
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`criminal jury trials shall be conducted prior to Tuesday, July 7, 2020” in the
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`Eastern District of Virginia and “No civil jury trials shall be conducted until
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`further notice, as the interests of justice require the prioritization of criminal jury
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`trials during the upcoming months. After criminal jury trials resume, the Court will
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`reassess its capacity to conduct civil jury trials and then establish a timeline for the
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`resumption of such trials.” EX1066 at 3, 5 and16 (emphasis in the original).
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`A month later on June 30, Judge Davis issued General Order No. 2020-19
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`based on recent studies reported by the CDC, a report by of the COVID-19 Judicial
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`Task Force, and additional new information. This Order further delays civil jury
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`trials because it extended the date for resumption of criminal jury trials by another
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`two months until on or after September 14, 2020. EX 1067 at 1-2 and 23.
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`In addition to the current concerns of empaneling a jury, having fact and
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`expert witnesses travel, and gathering for a trial, there is always the inherent
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`unpredictability of district court trial schedules. Unlike the district courts, however,
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`and as noted in Sand Revolution, the Board continues to be fully operational,
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`operating on a normal schedule, timely conducting oral hearings, and adhering to
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`02001050.DOCX
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`the one-year statutory deadline for final decisions. EX1063 at 9. Given the
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`uncertainty in the Eastern District of Virginia, especially in view of outstanding
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`motion practice described below (i.e. a pending motion to add an inequitable
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`conduct defense) and COVID-19 health concerns, it seems reasonably likely that
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`the Board would issue a final written decision before a jury trial takes place in
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`district court. This factor weighs in favor of institution.
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`
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`The Likelihood of A Stay of the Parallel District Court Action
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`Petitioner will move immediately for a stay of the district court action if the
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`Board institutes this IPR. Petitioner believes that the District Court would grant a
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`stay under these circumstances. The Honorable Chief Judge Davis expressed a
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`view to grant a stay at the outset of the original Rule 16 scheduling conference by
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`specifically asking counsel why “shouldn’t this matter be stayed pending . . . that
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`initial [Board] decision about the petition.” EX1068 at 2-3. The only reason
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`Petitioner’s counsel did not request the stay at that time was because Patent Owner
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`had only asserted five of its forty-one claims and threatened to assert additional
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`claims (not in Petitioner’s IPR) in its infringement contentions. Id. at 11-12. Judge
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`Davis purposefully scheduled the Markman hearing and subsequent expert
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`discovery dates “out past the six-month deadline for the institution decision so that
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`the Court could at that point, if institution takes place, make a decision about
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`whether it wishes to move forward or not.” Id. at 28.
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`– 4 –
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`02001050.DOCX
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`A stay of the underlying district court litigation would allow for efficient
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`judicial handling of the dispute between the parties. In the Eastern District of
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`Virginia, a stay may be granted if (i) the district court proceedings have not
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`reached an advanced stage, (ii) a stay would simplify the matters at issue in the
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`district court, and (iii) a stay will not unduly prejudice Patent Owner. See, e.g., In
`
`re: TLI Commc'ns Inc. Patent Litig., No. 1:14-cv-02534, 2014 U.S. Dist. LEXIS
`
`182206, at *7 (E.D. Va. Aug. 11, 2014) (granting stay of district court proceedings
`
`after filing of IPR petitions). Here, all the factors favor a stay.
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`First, the district court proceedings have not reached an advanced stage. The
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`Court has not issued a claim construction decision, opening expert reports
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`addressing invalidity are not due until August 13, 2020, and pre-trial preparations
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`are months away, all of which assumes no further postponements. See EX1064 at
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`2. COVID-19 health concerns could also extend the district court schedule.
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`Further, if Petitioner’s pending motion to add an inequitable conduct
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`defense is granted, JLR’s request for additional discovery, the potential for
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`additional or supplemental expert reports, and a separate bench trial, all could
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`extend a final decision on ’828 patent invalidity. EX1069.
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`Second, resolving ’828 patent validity based on the grounds in Petitioner’s
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`IPR petition would reduce the invalidity issues before the district court, and
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`potentially eliminate them, if the asserted claims were held invalid.
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`Finally, a stay will not unduly prejudice Patent Owner. The Summons was
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`issued on June 15, 2018 but Patent Owner waited well over two months until
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`August 30 to serve Petitioner’s registered agent. EX1070. Patent Owner never
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`pursued a temporary restraining order or preliminary injunction, expert discovery
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`has not started, and summary judgment and pre-trial deadlines remain months
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`away. Moreover, the parties mutually agreed to extend the case schedule in view of
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`the COVID-19 pandemic. EX1064 at 1. As stated above, Bentley will request a
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`stay immediately if an IPR is instituted. This factor weighs in favor of institution.
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`
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`The Real Parties in Interest Are Not Defendants In District Court
`
`In this IPR, Bentley Motors Limited and Bentley Motors Inc. are the
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`Petitioners. Volkswagen AG, Volkswagen Group of America, Inc.
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`(“Volkswagen”), Dr. Ing. h.c.F. Porsche AG (“Porsche”), and Audi AG (“Audi”)
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`are real parties in interest. In the district court action, however, only Bentley
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`Motors Limited and Bentley Motors Inc. are defendants.
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`In view of the difference between the PTAB petitioners and district court
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`defendants, there are judicial and practical efficiencies in instituting the IPR. For
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`instance, if the Board institutes, estoppel applies against the real parties in interest
`
`in district court and they may not contend that a claim is invalid based on the
`
`grounds raised during the IPR. 35 U.S.C. § 315(e)(2). If the PTAB does not
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`institute, estoppel in district court will not apply against the real parties in interest.
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`– 6 –
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`In addition, the real parties in interest are now time-barred from filing
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`another IPR petition, despite the PTAB not having considered the merits of their
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`invalidity arguments in this IPR. In other words, the real parties in interest are
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`barred from having their invalidity arguments heard in the PTAB because of a
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`discretionary denial based on a parallel lawsuit—to which they are not participants.
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`This factor favors institution.
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`
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`There Is Minimal Overlap Between the IPR Petition and District
`Court Case
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`Petitioner’s district court invalidity contentions contain various prior-art
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`references not at issue in the IPR, including several prior-art systems in use or on
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`sale during the relevant time period. See EX1071. There are also Section 101 and
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`Section 112 invalidity defenses. The overlap is therefore minimal. Furthermore,
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`Petitioner has not narrowed its invalidity positions to only those to be tried in the
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`district court. Regardless, if the IPR is instituted, Petitioner and the real parties in
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`interest in District Court are precluded from advancing the PTAB arguments in
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`District Court so there will be no overlap between the IPR and the District Court
`
`case.
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`
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`There Has Been Limited Investment in the Invalidity Issues by the
`District Court and the Parties
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`The district court has not considered the merits of Petitioner’s invalidity
`
`arguments. The District Court only recently conducted a Markman hearing but has
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`not yet issued a decision on disputed claim terms. The District Court also has not
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`considered any preliminary injunction or summary judgment motions, or otherwise
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`delved into the merits of Petitioner’s invalidity contentions and there are no
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`upcoming deadlines requiring the Judge to address invalidity. As a result, there
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`has been only a limited investment in the invalidity issues by the District Court and
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`the parties. This factor favors institution.
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` Other Circumstances That Impact the Board’s Exercise of
`Discretion, Including the Merits of the IPR Petition
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`Additional circumstances strongly favor institution. The Board’s reliance on
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`35 U.S.C. Section 314(a) and NHK Spring to justify discretionary denial based on
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`the procedural status of the parallel district court action is contrary to controlling
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`Supreme Court law and violates the Administrative Procedure Act (“APA”). The
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`Board’s institution discretion is limited to deciding whether to institute an inter
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`partes review under Section 314(a) “that proceeds ‘[in] accordance with’ or ‘in
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`conformance to’ the petition,” and whether “the petitioner is likely to succeed on
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`‘at least 1’ claim.” SAS Institute Inc. v Iancu, 138 S. Ct. 1348, 1355-56 (2018).
`
`The Board issued a discretionary denial of Bentley’s IPR petition: i) without
`
`rendering a decision under Section 314(a), as construed in SAS Institute, as to
`
`whether at least one claim of the ’828 patent is reasonably likely to be
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`unpatentable; ii) without reference to a governing regulation promulgated by
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`notice-and-comment rule making; and iii) based on non-statutory considerations,
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`– 8 –
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`02001050.DOCX
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`i.e. the procedural status of the co-pending district court proceeding. See Cuozzo
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`Speed Techs. v. Lee, 136 S. Ct. 2131, 2141-42 (2016) (“nor does our interpretation
`
`enable the agency to act outside its statutory limits,” citing 5 U.S.C. §§ 706(2)(A)-
`
`(D); see also Motor Vehicle Mfrs. Ass’n v. State Farm Mut., 463 U.S. 29, 43
`
`(1983) (“Normally, an agency rule would be arbitrary and capricious if the agency
`
`has relied on factors which Congress has not intended it to consider”). The only
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`statutory provisions governing the Director’s discretion to deny institution are
`
`contained in 35 U.S.C. Section 314(a) and Section 325(d) (“the same or
`
`substantially the same prior art or arguments previously were presented to the
`
`Office”), neither of which the Board addressed in its institution denial. The
`
`America Invents Act does not contain any statutory authority on which the
`
`Director may rely to deny a petition based on the procedural status of a co-pending
`
`district court proceeding. Nor has the Director engaged in notice-and-comment
`
`rulemaking to explain the basis for such asserted authority.
`
`Finally, this factor contemplates considering the merits of the Petition.
`
`Petitioner’s IPR squarely addresses deficiencies identified by the Board in its
`
`denial of Petitioner’s first IPR2019-1502. Here, the primary reference, Ford’s GB
`
`‘580 patent, unmistakably discloses that multiple vehicle subsystems controlled by
`
`a controller were well-known. JLR’s ‘828 patent even admits that Ford’s ‘580
`
`patent disclosed multiple vehicle subsystems.
`
`
`
`– 9 –
`
`02001050.DOCX
`
`
`
`Therefore, systems have been proposed in which the
`control of a number of the vehicle subsystems is
`coordinated by a central vehicle controller, which can be
`switched between a number of modes thereby controlling
`all of the subsystems in a coordinated way which is
`simple for the driver to control. Such a system is
`disclosed in GB2273580.
`
`Ex. 1001 at Col. 1, ll. 41-46. With the driver input, vehicle controller, and a
`
`plurality of subsystems all disclosed in the GB ‘580 patent, the primary claim
`
`element missing for JLR’s reissued independent claims is the selection of an off-
`
`road driving surface. As the patent notes, “to further expand the performance of
`
`motor vehicles. . . there is a need for an integrated control system which will
`
`provide improved control of the vehicle on a broad range of surfaces.” The Lancer
`
`prior art teaches this missing element, namely, selection of a surface by the driver
`
`because it discloses a mode for a snow surface and a mode for a gravel surface.
`
`If the Board agrees that the Petition demonstrates a reasonable likelihood of
`
`showing that one or more claims are not patentable, this finding should weigh
`
`heavily in favor of institution.
`
`The Apple v. Fintiv factors weigh in favor of institution. For the reasons
`
`discussed above and in Petitioner’s Request for Rehearing, the Board should
`
`institute Petitioner’s IPR.
`
`Respectfully submitted,
`
`/Edgar H. Haug/
`By:
`Edgar H. Haug (Reg. No. 29,309)
`
`
`
`
`
`– 10 –
`
`02001050.DOCX
`
`
`
`Brian P. Murphy (Reg. No. 34,986)
`Robert E. Colletti (Reg. No. 76,417)
`
`HAUG PARTNERS LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email: BentleyIPR@haugpartners.com
`
`Counsel for Petitioner
`
`
`
`
`– 11 –
`
`02001050.DOCX
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on July 10, 2020, pursuant to 37
`
`C.F.R. §§ 42.6(e), a complete and entire copy of Petitioner’s Supplemental Brief,
`
`and any other motions or filings were served by electronic mail on Petitioner’s lead
`
`and backup counsel at the following addresses:
`
`Jonathan M. Strang (Reg. No. 61,724)
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`jonathan.strang@lw.com
`
`Clement Naples (Reg. No. 50,663)
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`clement.naples@lw.com
`
`
`
`/Robert E. Colletti/
`By:
`Robert E. Colletti (Reg. No. 76,417)
`
`HAUG PARTNERS LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email: BentleyIPR@haugpartners.com
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`02001050.DOCX
`
`
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