Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: March 6, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LKQ CORPORATION,
`Petitioner,
`
`v.
`
`GM GLOBAL TECHNOLOGY OPERATIONS LLC,
`Patent Owner.
`____________
`
`
`
`IPR2020-00062 (Patent D811,964)
`IPR2020-00063 (Patent D828,255)
`IPR2020-00064 (Patent D823,741)
`IPR2020-00065 (Patent D813,120)1
`
`____________
`
`
`Before KEN B. BARRETT, JOSIAH C. COCKS, SCOTT A. DANIELS,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues pertaining to all four cases. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: March 6, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LKQ CORPORATION,
`Petitioner,
`
`v.
`
`GM GLOBAL TECHNOLOGY OPERATIONS LLC,
`Patent Owner.
`____________
`
`
`
`IPR2020-00062 (Patent D811,964)
`IPR2020-00063 (Patent D828,255)
`IPR2020-00064 (Patent D823,741)
`IPR2020-00065 (Patent D813,120)1
`
`____________
`
`
`Before KEN B. BARRETT, JOSIAH C. COCKS, SCOTT A. DANIELS,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues pertaining to all four cases. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2020-00062 (Patent D811,964)
`IPR2020-00063 (Patent D828,255)
`IPR2020-00064 (Patent D823,741)
`IPR2020-00065 (Patent D813,120)
`
`
`
`Petitioner requested, by emails dated February 20, 2020, a conference
`with the Board seeking authorization to file a motion under 37 C.F.R.
`42.71(a) to terminate IPR2020-00063 and IPR2020-00065, and also seeking
`authorization under 37 C.F.R. 42.108(c) to file a reply to Patent Owner’s
`Preliminary Response in IPR2020-00062 and IPR2020-00064. We
`conducted a conference call on February 25, 2020, with Patent Owner’s and
`Petitioner’s counsel. We address Petitioner’s requests, below, in turn.
`Authorization to file a motion to dismiss
`IPR2020-00063 and IPR2020-00065
`Petitioner indicated in its emails that it desires to terminate these inter
`partes review proceedings without prejudice and, instead, file a consolidated
`ex parte reexamination of the ’255 and ’120 patents. This situation is unique
`because Patent Owner is opposed to dismissal and termination of these
`proceedings. Patent Owner argues that Petitioner is unfairly forum shopping
`within the Patent Office by terminating these Petitions in order to file an ex
`parte reexamination. Patent Owner argues that it has expended significant
`effort in these proceeding defending its patents, developing evidence and
`filing its Preliminary Response in each case. To end these proceedings
`without a decision on the merits, and particularly without prejudice, is
`unfair, Patent Owner argues, because no estoppel will apply and allows
`Petitioner to attack its patents again at a later date.
`We explained to Petitioner’s counsel that, rather than simply
`termination, because we have not made any determination on institution in
`this case, that authorization would properly be styled as a motion to dismiss
`
`
`
`2
`
`
`
`IPR2020-00062 (Patent D811,964)
`IPR2020-00063 (Patent D828,255)
`IPR2020-00064 (Patent D823,741)
`IPR2020-00065 (Patent D813,120)
`
`the Petition. 37 C.F.R. § 42.71. Also, with respect to Patent Owner’s
`argument and alleged prejudice, we told the parties that we were unaware of
`any Board precedent, rule, or statute which permits the Board to dismiss or
`terminate with prejudice an inter partes review proceeding. We also pointed
`out that Petitioner can file an ex parte reexamination at this phase of the
`inter partes review proceedings.
`We instructed the parties to meet and confer on the matter of dismissal
`and prejudice in these proceedings and see if they can come to agreement on
`any issues pertaining to future inter partes review filings. We note that
`whether a statutory provision such as Section 315(a)(1) bars a subsequent
`petition and whether the Board will apply its discretion pursuant to Sections
`314(a) and 325(d) to deny a subsequent petition are questions that the Board
`decides after filing of such a subsequent petition, not before.
`We authorized Petitioner to file an eight (8) page motion to dismiss its
`Petition, due March 6, 2020, and Patent Owner an eight (8) page opposition,
`due March 20, 2020.
`Authorization to file a reply to Patent Owner's Preliminary Response
`IPR2020-00062 and IPR2020-000642
`Petitioner also requests to file a reply to Patent Owner’s Preliminary
`Response to address several issues with respect to printed publications,
`namely, (1) whether Petitioner’s asserted grounds are based on printed
`publications; (2) which printed publications were specifically relied upon for
`Petitioner’s grounds, versus as supporting evidence probative of the printed
`
`2 Unless otherwise noted, we refer to the papers and exhibits numbers in
`IPR2020-00064 under this heading.
`
`
`
`3
`
`
`
`IPR2020-00062 (Patent D811,964)
`IPR2020-00063 (Patent D828,255)
`IPR2020-00064 (Patent D823,741)
`IPR2020-00065 (Patent D813,120)
`
`publications status of Petitioner’s relied-upon references; (3) whether certain
`references were available prior to the critical date of the challenged patent;
`and (4) clarifying a typographical error that erroneously suggests more than
`one reference was relied upon.
`Review of the Preliminary Response indicates that one of Patent
`Owner’s main arguments is specifically that “[b]oth Grounds 1 and 2 fail
`because they are based on a physical vehicle—the ‘2015 Cadillac
`Escalade’—not ‘patents or printed publications.’” Paper 7 (“Prelim.
`Resp.”), 8. Patent Owner argues that it is unclear which exhibit, i.e. Ex.
`1007, or Ex. 1008, or the physical 2015 Cadillac Escalade, Petitioner is in
`fact relying on for the asserted grounds as the purported secondary
`reference. Id. at 9. After discussing with the parties, we determined that the
`question is mainly whether Grounds 1 and 2 in the Petition include as part of
`the challenge, a printed publication, or the physical vehicle itself, and
`whether the challenges and supporting evidence relied upon by Petitioner
`have been set forth in the Petition with sufficient particularity. See Paper 2
`(“Pet.”), 30 (stating that “[a]t least as early as August 4, 2015, the design of
`Patent Owner’s undisclosed 2015 Cadillac Escalade prior art was made
`publicly available online by Cadillac Worldwide and included a copyright
`date of 2015 attributed to General Motors.” (citing Ex. 1008; Ex. 1010 ¶ 8)),
`and see Prelim. Resp. 9 (Patent Owner arguing that Petitioner has
`impermissibly relied “on the ‘2015 Cadillac Escalade’ vehicle as purported
`prior art.”). In this regard, Patent Owner’s argument, and Petitioner’s issues
`(1), (2), and (4) are directed to the sufficiency of the Petition under
`35 U.S.C. § 312(a).
`
`
`
`4
`
`
`
`IPR2020-00062 (Patent D811,964)
`IPR2020-00063 (Patent D828,255)
`IPR2020-00064 (Patent D823,741)
`IPR2020-00065 (Patent D813,120)
`
`
`Petitioner is authorized to file a five (5) page reply to address these
`issues as to the sufficiency of the Petition under 35 U.S.C. § 312(a).
`37 C.F.R. § 42.108(c). As we also directed during the call, no new evidence
`should be included or filed with any reply. No sur-reply was authorized.
`Also during the call, Petitioner’s counsel raised specifically issue (3),
`indicating a desire to submit with its reply, evidence in the form of an
`affidavit from the Internet Archive, which could potentially be supplemental
`information (37 C.F.R. § 42.123) or supplemental evidence (37 CFR
`§ 42.64(b)) with respect to foundation and public availability of certain
`printed publications as of the asserted dates. See Pet. 28, n.4 (The Petition
`states that “[a]n affidavit has been requested from the Internet Archive with
`respect to Exhibits 1005 and 1007–1009.”). First, we point out that Patent
`Owner did not specifically dispute, or raise, the issue of any specific date of
`public availability of the purported printed publications in its Preliminary
`Response. Prelim. Resp. 8–9. Thus, such supplemental information or
`supplemental evidence is not appropriate for a reply in this case. See Hulu,
`LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 at 14
`(PTAB Dec. 20, 2019) (Precedential) (explaining that the additional
`“evidence must be responsive to the prior briefing.” (citing 37 C.F.R.
`§ 42.23)). To the extent Petitioner desires to submit supplemental
`information or supplemental evidence, Petitioner may, at the proper time,
`respond to Patent Owner’s evidentiary objections or request authorization
`from the Board to file a motion to submit supplemental information.
`37 C.F.R. §§ 42.108(c), 42.23, 42.64, 42.123.
`
`
`
`5
`
`
`
`IPR2020-00062 (Patent D811,964)
`IPR2020-00063 (Patent D828,255)
`IPR2020-00064 (Patent D823,741)
`IPR2020-00065 (Patent D813,120)
`
`
`
`It is
`ORDERED that in IPR2020-00063 and IPR2020-00065 Petitioner is
`authorized to file an eight (8) page motion to dismiss its Petition, due March
`6, 2020;
`ORDERED that in IPR2020-00063 and IPR2020-00065 Patent Owner
`is authorized to file an eight (8) page opposition, due March 20, 2020.
`ORDERED that in IPR2020-00062 and IPR2020-00064 Petitioner is
`authorized to file a five (5) page reply, due March 6, 2020; and
`FURTHER ORDERED that in IPR2020-00062 and IPR2020-00064
`no other documents besides Petitioner’s reply are authorized to be filed in
`these proceedings.
`
`
`
`
`6
`
`
`
`IPR2020-00062 (Patent D811,964)
`IPR2020-00063 (Patent D828,255)
`IPR2020-00064 (Patent D823,741)
`IPR2020-00065 (Patent D813,120)
`
`For PETITIONER:
`
`Barry F. Irwin
`Reid Huefner
`IRWIN IP LLC
`birwin@irwinip.com
`rhuefner@irwinip.com
`
`
`For PATENT OWNER:
`
`Dorothy P. Whelan
`Craig A. Deutsch
`Grace J. Kim
`FISH & RICHARDSON P.C.
`whelan@fr.com
`deutsch@fr.com
`gkim@fr.com)
`
`
`
`
`7
`
`
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