Filed on behalf of: Jaguar Land Rover Limited
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`Entered: December 11, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`BENTLEY MOTORS LIMITED
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`and
`BENTLEY MOTORS, INC.,
`Petitioner,
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`v.
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`JAGUAR LAND ROVER LIMITED,
`Patent Owner.
`_______________________
`Case IPR2019-01539
`Patent RE46,828
`______________________
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`PATENT OWNER’S RESPONSE TO
`PETITIONERS’ RANKING STATEMENT
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`Entered: December 11, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`BENTLEY MOTORS LIMITED
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`and
`BENTLEY MOTORS, INC.,
`Petitioner,
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`v.
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`JAGUAR LAND ROVER LIMITED,
`Patent Owner.
`_______________________
`Case IPR2019-01539
`Patent RE46,828
`______________________
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`PATENT OWNER’S RESPONSE TO
`PETITIONERS’ RANKING STATEMENT
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`IPR2019-01539 (USP RE46,828)
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`PO’s Resp. to Pet’r Ranking Statement
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`I.
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`Introduction
`Petitioners filed two Petitions challenging the same 13 claims of U.S. Patent
`No. RE46,828. The Board should institute at most one of these IPRs because
`Petitioners have not demonstrated sufficient material differences between their
`Petitions to justify the added burden imposed on the Board and the Patent Owner.
`In Pfenex, the Board denied institution of a second IPR because the
`petitioner failed to show that any differences in their petitions were “sufficiently
`material to outweigh the inefficiencies and costs to the Board and Patent Owner
`that would result from instituting on both” petitions. Pfenex Inc. v.
`GlaxoSmithKline Biologicals SA, IPR2019-01027, Paper 12 at 11-13 (Nov. 13,
`2019) (“Pfenex”); see Trial Practice Guide Update (July 2019) at 26 (“Two or
`more petitions filed against the same patent at or about the same time … may place
`a substantial and unnecessary burden on the Board and the patent owner and could
`raise fairness, timing, and efficiency concerns.”).
`The same is true here. As in Pfenex, the two “Petitions were filed by the
`same Petitioner and challenge the same claims of the same patent.” Phenex,
`IPR2019-01027, Paper 12 at 12 (emphasis in original). The Pfenex petitioner
`challenged only 12 claims, id. at 13, and here, Petitioners challenge only 13 claims.
`In fact, Petitioners have a weaker case for two IPRs than in Pfenex, where the two
`petitions applied different art and a different statutory basis (anticipation vs.
`obviousness). Id. at 12. Here, both Petitions assert obviousness over largely the
`same or similar art. In addition, the -01502 IPR relies on the Porsche 959
`references for the Base Claim elements, and the -01539 IPR relies on the
`1
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`IPR2019-01539 (USP RE46,828)
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`PO’s Resp. to Pet’r Ranking Statement
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`Mitsubishi Lancer references and GB ’580, a British patent application. Other than
`the primary references targeting the Base Claim elements, the two IPRs generally
`rely on the same art, as shown below:
`
`IPR2019-01539 Art
`IPR2019-01502 Art
`Claims
`Lancer, GB ’580
`Porsche 959
`30, 32
`Porsche 959, BMW, GB ’580 Lancer, GB ’580
`45
`33, 34, 41, 42 Porsche 959, Ford, GB ’580
`Lancer, GB ’580, ’859 patent
`Porsche 959, ’318 patent
`Lancer, GB ’580, ’318 patent
`37, 39
`Porsche 959, ’614 patent
`Lancer, GB ’580, ’614 patent
`46
`Porsche 959, Hummer
`Lancer, GB ’580, Hummer
`21, 24, 43
`
`Petitioners contend two IPRs are warranted because (i) it needed many
`references to cover different claim elements and disputed claim constructions, and
`(ii) the IPR estoppel would preclude it from asserting the art in court. But
`Petitioners did not need to use many different references as discussed further
`below. And as shown above, the Petitioners relied on many of the same references
`in both Petitions. In addition, the IPR estoppel would not preclude Petitioners
`from asserting their art in court because the district court trial in is scheduled
`months before any final written decision will issue in either IPR. Ex. 2024 at 1.
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`II.
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`The Two Petitions Use Much Of The Same Art And Same Claim
`Constructions
`Petitioners contend that two petitions are necessary because, aside from the
`base claim elements, “[t]he challenged claims are lengthy and recite limitations
`that invoke multiple vehicle subsystems [including] brakes, suspension,
`transmission, throttle control, and powertrain.” Ranking at 3, 5 (Paper 3).
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`2
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`IPR2019-01539 (USP RE46,828)
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`PO’s Resp. to Pet’r Ranking Statement
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`But Petitioners failed to inform the Board that both Petitions generally use
`the same art for those subsystems, as shown in the table above. This weighs
`heavily against instituting a second IPR. In Comcast, the petitioner filed two IPRs
`against the same patent, and argued that “material differences justif[ied] institution
`of both petitions.” Comcast Cable Commc’ns v. Rovi Guides, Inc., IPR2019-
`00232, Paper 14 at 11 (May 20, 2019) (“Comcast”). The Board disagreed, noting
`that “[f]or certain of these alleged material differences, … Petitioner relies on
`secondary references in the instant proceeding, which … are asserted in [the other
`IPR].” Id.
`The same is true here. The primary difference between the Petitions is in the
`primary references used to challenge the Base Claim elements, as the same art is
`used for the expressly claimed subsystems. But even the primary references are
`cumulative in relevant respects. For the -01502 IPR, Petitioner relied on the
`Porsche 959’s all-wheel drive control system that controls the car’s center and rear
`differentials (called “interaxle differential” and “lateral lock”), alleging that the
`two differentials were multiple “vehicle subsystems” having multiple “subsystem
`configuration modes” for a respective driving surface. -01502 POPR 15-16; -01502
`Pet. 19-26. In the -01539 IPR, Petitioner similarly relied on the Lancer’s integrated
`controller for its center and rear differentials to show multiple “vehicle
`subsystems” having multiple “subsystem configuration modes” for a respective
`driving surface. -01539 POPR 18-31; -01539 Pet. 24-29. Thus, both Petitions rely
`on similar differential control systems as teaching the same claim limitation—
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`IPR2019-01539 (USP RE46,828)
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`PO’s Resp. to Pet’r Ranking Statement
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`multiple “vehicle subsystems” having multiple “subsystem configuration modes”
`for a respective driving surface.
`Petitioners also allege that claim construction is somehow an issue in one
`IPR and not the other. Ranking 2, 5. But both Petitions contain the exact same
`claim construction sections and similar allegations regarding their respective
`teachings. -01502 Pet. 12-16 (claim construction), 25-26 (alleging Porsche’s
`traction and snow modes are off-road modes); -01539 Pet. 12-15 (claim
`construction), 29-30 (alleging Lancer’s gravel and snow modes are off-road
`modes). And Patent Owner does not dispute any constructions for the purposes of
`opposing institution of either IPR. So again, Petitioners have failed to identify any
`material differences between their Petitions that warrant a second IPR. See
`Comcast, IPR2019-00232, Paper 14 at 12 (rejecting the petitioner’s “shifting claim
`construction” argument where both petitions had the same claim-construction
`theories).
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`III. The IPR Estoppel Is Not An Issue Here Because Trial Is Scheduled
`Four Months Before Any Final Written Decision Will Issue
`Petitioners contend they must provide the Board with all “well-grounded
`bases for finding the challenged ’828 claims unpatentable, or run the risk of being
`estopped in district court.” Ranking at 4.
`Petitioners are wrong. IPR estoppel is triggered by a final written decision,
`35 U.S.C. § 315(e)(2), and no final written decision is scheduled to issue until late
`February 2021—four months after the one-week trial set for October 13, 2020 in
`the parallel district court action. See Ex. 2024 at 1. Petitioners thus have no
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`4
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`IPR2019-01539 (USP RE46,828)
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`PO’s Resp. to Pet’r Ranking Statement
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`estoppel concerns at all. Furthermore, the IPR estoppel is not a sufficient reason to
`allow institution of multiple petitions, or multiple petitions would always be
`allowed. As the Board stated in Pfenex, “the mere fact that Petitioner may have
`had additional art to assert, including a different statutory basis for asserting that
`art, does not … justify the additional burden of a second petition directed to the
`same claims.” Pfenex, IPR2019-01027, Paper 12 at 13-14.
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`IV. Conclusion
`For the above reasons, if the Board institutes any of Petitioners’ petitions, it
`should institute no more than one.
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`Dated: December 11, 2019
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`Respectfully submitted,
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`By: / Jonathan M. Strang /
`
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
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`Clement Naples (Reg. No. 50,663)
`clement.naples@lw.com
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`Telephone: 212.906.1200
`Fax: 212.751.4864
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`Counsel for Patent Owner
`Jaguar Land Rover Limited
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`5
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`IPR2019-01539 (USP RE46,828)
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`PO’s Resp. to Pet’r Ranking Statement
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 11th day of December,
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`2019, a true and correct copy of the foregoing Patent Owner’s Response to
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`Petitioners’ Ranking Statement was served by electronic mail on Petitioner’s lead
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`and backup counsel at the following email addresses:
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`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
`NY, NY 10151
`Tel. 212.588.0800
`Fax 212.588.0500
`BentleyIPR@haugpartners.com
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`By: / Jonathan M. Strang /
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
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`Counsel for Patent Owner
`Jaguar Land Rover Limited
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