`
`
`
`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
`_________________________________
`
`U.S. Patent No. RE46,828
`
`IPR2019-01539
`__________________________________
`
`PETITIONER BENTLEY’S RANKING AND EXPLANATION FOR TWO
`PETITIONS CHALLENGING U.S. PATENT NO. RE46,828
`
`
`
`
`
`I. INTRODUCTION
`
`
`Pursuant to the July 2019 Trial Practice Guide Update (“Update”),
`
`Petitioners Bentley Motors Limited and Bentley Motors, Inc. (“Petitioner”) rank,
`
`and explain the need to file, two Petitions challenging certain claims in Jaguar
`
`Land Rover’s (“Patent Owner”) U.S. Patent No. RE46,828 (“the ’828 patent”).
`
`II. RANKING OF PETITIONS
`
`
`Petitioner ranks the two Petitions challenging claims 21, 24, 30, 32-34, 37,
`
`39, 41-43, 45, and 46 of the ʼ828 patent as follows:
`
`
`Rank
`1
`
`Petition
`IPR2019-01502 (“-1502
`Petition”)
`
`2
`
`IPR2019-01539(“-1539
`Petition”)
`
`Grounds
`Grounds 1-6: Claims 21, 24, 30, 32-34, 37,
`39, 41-43, 45, and 46 Obvious over the
`Porsche 959 Art in combination with various
`references.
`Grounds 1-5: Claims 21, 24, 30, 32-34, 37,
`39, 41-43, 45, and 46 Obvious over GB ’580
`and the Lancer Art in combination with
`various references.
`
`
`
`III. EXPLANATION FOR TWO PETITIONS
`
`
`A. Disputed Claim Construction and Thirteen Lengthy Claims with
` Multiple Invalidating References Not Considered by the
` Examiner
`
`The ’828 patent claims a control system for a conventional motor vehicle
`
`with multiple driving modes. The driver selects a driving mode based on the
`
`driving surface and the vehicle configures various subsystems in response (e.g.
`
`
`
`1
`
`
`
`suspension, transmission, brakes). Within each driving mode the controller
`
`configures integrated subsystems to be suitable for different types of terrain.
`
`Patent Owner’s reissue declaration stated the “error to be corrected is the
`
`omission of a claim directed to a vehicle control system having driving modes that
`
`include at least two off-road modes and an on-road mode.” Ex. 1021, Page 425.
`
`(emphasis added). During reissue, Petitioner provided Patent Owner with a copy
`
`of one of the primary invalidating references in the -1502 Petition—the Porsche
`
`959 Driver’s Manual (Ex. 1003)—yet Patent Owner did not disclose it to the
`
`Examiner. The reference discloses driver selection of two off-road driving modes
`
`based on the driving surface. Patent Owner asserted, however, that the reference
`
`does not disclose two “off-road modes” when properly construed. Petitioner has
`
`addressed Patent Owner’s presumed claim construction argument in the -1502
`
`Petition.
`
`The -1539 Petition relies on GB ’580 in combination with the Lancer Art
`
`(Exs. 1017, 1048, 1059, 1060), because the Lancer Art incontrovertibly discloses
`
`driver selection of two off-road modes based on two driving surfaces (gravel and
`
`snow). GB ’580 was the primary reference relied upon in the corresponding
`
`European prosecution, which rejected Applicant’s application. Patent Owner cited
`
`the January 2001 Lancer Press Information (Ex. 1017) to the Patent Office during
`
`reissue, but the Examiner never relied on it to reject the claims. Ex. 1021, Pages
`
`
`
`2
`
`
`
`423-463, 609-634. Petitioner has located dated library copies of automobile
`
`magazines published prior to April 2002 in Japan that discuss the Lancer’s
`
`drivetrain system in detail. Those articles have certified translations into English
`
`with publication dates of May 13, 2001 and October 27, 2001. Exs. 1059, 1060.
`
`Patent Owner has asserted infringement of thirteen claims from the ’828
`
`patent against Petitioner and real parties in interest. The challenged claims are
`
`lengthy and recite limitations that invoke multiple vehicle subsystems. The claims
`
`implicate at least the following subsystems: brakes, suspension, transmission,
`
`throttle control, and powertrain. Petitioner submits that two petitions are necessary
`
`to address each of the implicated vehicle subsystems because none of the prior art
`
`combinations relied on in the Petitions was ever considered by the Examiner.
`
`B.
`
`“Reasonably Could Have Raised” Estoppel
`
`35 U.S.C. § 315(e)(2) provides:
`
`
`The petitioner in an inter partes review . . . that results in a final
`written decision under section 318(a) . . . may not assert in
`either a civil action arising in whole or in part under section
`1338 of title 28 . . . that the claim is invalid on any ground that
`the petitioner raised or reasonably could have raised during
`that inter parties review. (emphasis added).
`Post SAS Institute,1 “reasonably could have raised” estoppel is being
`
`aggressively asserted in, and accepted by, the district courts. “[T]he majority of
`
`District Courts have determined that IPR estoppel applies to any prior art that
`
`
`1 SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`
`
`
`3
`
`
`
`reasonably could have been raised, even if not actually raised in the IPR
`
`proceeding.” Novartis Pharms. Corp. v. Par Pharm. Inc., Civil Action No. 14-
`
`1289-RGA, 2019 U.S. Dist. LEXIS 62489, at *6 (D. Del. April 11, 2019) (citing
`
`Bio-Rad Labs., Inc. v. 10X Genomics, Inc., 322 F. Supp. 3d 537, 541 (D. Del.
`
`2018)); see also Am Tech. Ceramics Corp. v. Presidio Components, Inc., 2019 WL
`
`365709, at *2, 4-5 (E.D.N.Y. Jan. 30, 2019); Milwaukee Electric Tool Corp. v.
`
`Snap-On Inc. , 271 F. Supp. 3d 990, 1029-30 (E.D. Wisc. 2017); Network-I Techs.,
`
`Inc. v. Alcatel-Lucent USA, Inc., No. 6:11-cv-00492-RWS, 2017 U.S. Dist. LEXIS
`
`178857, at *6-7 (E.D. Tex. Oct. 27, 2017); Sionyx v. Hamamatsu Photonics K.K.,
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`330 F. Supp. 3d 574, 601-02 (D. Mass Aug. 30, 2018). Therefore, it is incumbent
`
`upon Petitioner to provide the Board with all of the well-grounded bases for
`
`finding the challenged ’828 claims unpatentable, or run the risk of being estopped
`
`in district court. See Intex Recreation Corp. v. Team Worldwide Corp., IPR2018-
`
`00874, Paper 14, 11-12 (PTAB October 29, 2018) (“[Reasonably could have raised
`
`estoppel] forces a petitioner to decide the breadth of the challenge to bring given
`
`the risk that certain grounds may not be brought in a parallel civil action.
`
`Accordingly, the statute contemplates that a petitioner may decide that the
`
`appropriate breadth of a challenge warrants multiple petitions.”). Petitioner needs
`
`more than the allotted 14,000 words in one petition to present a thorough analysis
`
`of each ground in this case. See id. at 12 (“This approach [5 petitions] allowed
`
`
`
`4
`
`
`
`Petitioners to present a more thorough analysis for each of its 14 asserted grounds
`
`as compared to what a single petition would allow.”)
`
`IV. DIFFERENCES BETWEEN THE PETITIONS
`
`
`The -1502 and -1539 Petitions rely on different prior art combinations, none
`
`of which were considered by the Examiner, to demonstrate unpatentability of the
`
`ʼ828 claims. The Porsche 959 Art (-1502 Petition) teaches selection of multiple on
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`and off-road driving modes based on different driving surfaces (claim 30) and
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`ordered driving mode selection (clam 32). The additional references disclose the
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`recited subsystem configurations: suspension subsystem with adjustable ride
`
`height (claims 33, 34, 41 and 42); electronic throttle control subsystem (claims 37
`
`and 39); transmission subsystem with plurality of transmission ratios (claim 45);
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`speed control subsystem for hill descent (claim 46); and traction control and brake
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`subsystems (claims 21, 24, and 43). The -1539 Petition, in contrast, relies on the
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`combination of GB ’580 and the Lancer Art, regardless of Patent Owner’s “off-
`
`road mode” claim construction argument.
`
`Petitioner requests that the Board institute both petitions “if it identifies one
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`petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” Update, 27.
`
`
`
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`
`
`
`
`5
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`
`
`Date: August 23, 2019
`
`Respectfully Submitted,
`
`
`
`By: /s/ Edgar H. Haug
`Edgar H. Haug (Reg. No. 29,309)
`Brian P. Murphy (Reg. No. 34,986)
`Robert E. Colletti (Reg. No. 76,417)
`Georg C. Reitboeck (pro hac vice to be
`requested)
`Christopher F. Gosselin (pro hac vice to be
`requested)
`
`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
`
`
`
`
`
`6
`
`
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