UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`LKQ Corporation and Keystone Automotive Industries, Inc.,
`
`Petitioners,
`
`v.
`
`GM Global Technology Operations LLC,
`
`Patent Owner.
`
`_________________
`
`U.S. Design Patent No. D813,120
`
`Filed: September 19, 2016
`
`Issued: March 20, 2018
`
`Title: Hood Panel of Car
`
`__________________________
`
`MOTION FOR LKQ TO WITHDRAW AND THE BOARD TO DISMISS
`PETITION FOR INTER PARTES REVIEW
`
`Inter Partes Review No.: IPR2020-00065
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`LKQ Corporation and Keystone Automotive Industries, Inc.,
`
`Petitioners,
`
`v.
`
`GM Global Technology Operations LLC,
`
`Patent Owner.
`
`_________________
`
`U.S. Design Patent No. D813,120
`
`Filed: September 19, 2016
`
`Issued: March 20, 2018
`
`Title: Hood Panel of Car
`
`__________________________
`
`MOTION FOR LKQ TO WITHDRAW AND THE BOARD TO DISMISS
`PETITION FOR INTER PARTES REVIEW
`
`Inter Partes Review No.: IPR2020-00065
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`IPR2020-00065
`U.S. Design Patent No. D813,120
`
`
`I. MEET AND CONFER RESULTS
`
`As an initial matter, in response to the Board’s February 25, 2020 request that
`
`the parties meet and confer to explore reducing or eliminating future challenges, the
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`parties met on March 5, 2020. LKQ extended various proposals, but at the end of
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`the call, the parties had not reached agreement; the parties continue to explore
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`possibilities. That said, LKQ expressed interest in exploring the Board-sponsored
`
`mediation proposed by the Board during the teleconference and would welcome a
`
`call to discuss such a plan. Meanwhile, whenever possible, LKQ intends to pursue
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`reexamination rather than Board review to cost effectively address the global dispute
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`and reduce the burden on the Board.
`
`II.
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`INTRODUCTION
`
`Pursuant to the Board’s February 25, 2020 Order, LKQ Corporation and
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`Keystone Automotive Industries, Inc. (“LKQ”) submit this motion to withdraw and
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`dismiss without prejudice and terminate IPR2020-00065 (“Petition”) (challenging
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`U.S. Design Patent No. D813,120 (“the ʼ120Patent”)) under 37 C.F.R. § 42.71(a).
`
`The Board has discretion to “grant, deny, or dismiss any petition or motion,”
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`and to “enter any appropriate order.” 37 C.F. R. § 42.71(a) (emphasis added).
`
`Patent Owner filed a Preliminary Response requesting the Petition not be instituted,
`
`but the Board has not issued its institution decision. Although LKQ’s Petition is
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`meritorious, LKQ nonetheless respectfully requests that the Board exercise its
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`2
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`IPR2020-00065
`U.S. Design Patent No. D813,120
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`discretion to allow LKQ to withdraw the Petition and dismiss to preserve the Board’s
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`and the Parties’ resources. 37 C.F. R. § 42.1(b). Although LKQ is not time-barred
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`from filing additional petitions against the patent, should LKQ’s motion to withdraw
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`be granted, LKQ does not intend to do so. Rather, due to recently discovered prior
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`art that poses a substantial new question of patentability—and given that LKQ has
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`filed numerous post-grant review petitions (IPRs and PGRs) challenging Patent
`
`Owner’s design patents, and anticipates filing many more—LKQ instead seeks to
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`challenge this patent (and others, whenever possible) through the more cost-efficient
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`ex parte reexamination, which will better use the Parties’ and the Board’s resources.
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`Again, although Patent Owner requests that LKQ’s Petition be denied, Patent
`
`Owner nonetheless advised LKQ that it opposes LKQ’s motion to withdraw the
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`Petition. To be clear, LKQ is not requesting adverse judgment under 37 C.F.R.
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`§ 42.73(b). If the Board is only willing to grant this request if it is styled as a request
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`for an adverse judgment, LKQ will proceed with the Petition.
`
`Below, to illustrate why LKQ believes it would be more efficient to move
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`forward with a reexamination based upon this newly discovered art, LKQ provides
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`three example prior art reference that LKQ recently identified, in comparison to the
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`design patent at issue and the closest prior art reference cited in the prosecution
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`history. This new art creates a substantial new question of patentability making ex
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`parte reexamination appropriate:
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`3
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`
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`IPR2020-00065
`U.S. Design Patent No. D813,120
`
`
`The Challenged ’120 Patent
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`Closest Prosecution History
`Cited Reference
`
`
`
`
`
`Recently-discovered Prior Art
`
`U.S. Design Patent D746,740 (Wolff)
`
`U.S. Design Patent D774,951
`(Kazama)
`
`
`
`U.S. Design Patent D662,013
`(Hakamata)
`
`U.S. Design Patent D787,389 (Wolff)
`
`
`
`U.S. Design Patent D777,622
`(Kozub)
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`
`
`
`
`U.S. Design Patent D699,642
`(Kubota, Supplemental Content)
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`
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`4
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`IPR2020-00065
`U.S. Design Patent No. D813,120
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`III. RELATED MATTERS AND PROCEDURAL HISTORY
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`In addition to this proceeding, LKQ has filed petitions for Inter Partes Review
`
`or Post Grant Review against the following patents assigned to Patent Owner:
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`Filing Date
`
`Case Number (Patent Number)
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`October 17, 2019
`(accorded)
`
`IPR2020-00062 (D811,964); IPR2020-00063 (D828,255);
`IPR2020-00064 (D823,741); PGR2020-00002 (D847,043);
`PGR2020-00003 (D847,703); PGR2020-00004 (D840,306);
`PGR2020-00005 (D841,532)
`
`February 7, 2020
`(accorded)
`
`IPR2020-00530 (D813,755); IPR2020-00534 (D797,625);
`IPR2020-00536 (D797,624); PGR2020-00020 (D852,099);
`PGR2020-00021 (D853,903); PGR2020-00022 (D850,341);
`PGR2020-00023 (D859,246); PGR2020-00024 (D859,253)
`
`LKQ anticipates filing numerous additional challenges. As shown in the
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`table, above, none of LKQ’s challenges are duplicative; instead, each addresses a
`
`different design patent. Further challenges will also apply to different patents.
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`Regarding the current proceeding, the Petition was accorded a filing date of
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`October 17, 2019. Patent Owner filed its Preliminary Response on February 13,
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`2020. The Parties met and conferred on February 20, 2020 regarding this motion.
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`On February 25, 2020, the Board, over Patent Owner’s opposition, authorized LKQ
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`to file the present motion under 37 C.F.R. § 42.71(a). The Board has not yet reached
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`the merits of the Petition, nor has the Board issued a decision regarding institution.
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`5
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`
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`IPR2020-00065
`U.S. Design Patent No. D813,120
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`IV. ARGUMENT
`
`Good cause exists to allow LKQ to withdraw its Petition. Withdrawal would
`
`preserve the Board’s and the Parties’ resources. See 37 C.F.R. § 42.1(b). This
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`proceeding is in its preliminary proceeding stage—i.e., the Board has not yet reached
`
`the merits and issued a decision on institution. Patent Owner would not be
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`prejudiced by LKQ’s withdrawal and subsequent dismissal of its petition.
`
`The Board has acknowledged its broad authority to terminate proceedings
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`generally and without issuing a final written decision under 37 C.F.R. §§ 42.71(a)
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`and 42.5(a). See Facebook, Inc. v. EveryMD.com, IPR2018-00050, Paper 19 at 4, 8
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`(P.T.A.B. Oct. 9, 2018) (“[T]he regulations expressly provide the Board with broad
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`authority to dismiss a Petition where appropriate” and dismissing, among other
`
`reasons, since it was an “inefficient use of the Boards resources,” petitioner
`
`requested termination, and the proceedings were “at a relatively early stage”); see
`
`also Samsung Elecs. Co. v. NVIDIA Corp., IPR2015-01270, Paper 11 at 3–4
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`(P.T.A.B. Dec. 9, 2015) (noting that “the rules do not expressly preclude termination
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`. . . during the preliminary proceedings” and dismissing because the case was “at
`
`[an] early juncture” and “to promote efficiency and minimize unnecessary costs”).
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`Petitioner has not been able to identify any precedent wherein the Board found
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`that it could not—or would not—terminate proceedings at Petitioner’s request prior
`
`to institution. And, it makes no sense for Patent Owner to oppose such dismissal
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`6
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`IPR2020-00065
`U.S. Design Patent No. D813,120
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`when it simultaneously argues that institution should be denied. If, as Patent Owner
`
`desires, institution were denied, Petitioner would not be estopped from filing a
`
`reexamination request. Petitioner’s motion results in the Petition not moving
`
`forward, as Patent Owner requests, but it does so without requiring the Board to
`
`expend time and resources on the matter. Indeed, the Board’s authority to grant this
`
`motion is further confirmed by 37 C.F.R. § 42.72 (the Board “may terminate a trial
`
`without rendering a final written decision, where appropriate”). When determining
`
`whether termination is “appropriate,” the Board has primarily looked to what stage
`
`of the proceedings the request is made and has repeatedly granted pre-institution
`
`termination. See, e.g., Samsung, IPR2015-01270, Paper 11 at 3–4 (granting opposed
`
`motion to terminate proceeding during the preliminary proceeding stage of the IPR);
`
`HTC Corp. v. Patentmarks Comm., LLC, IPR20100905, Paper 7 at 3 (P.T.A.B. Aug.
`
`26, 2014) (granting unopposed motion to terminate stating that a “decision on the
`
`Petition . . . has not yet been rendered. Under these circumstances, we determine
`
`that it is appropriate . . . to terminate this proceeding without rendering a final written
`
`decision.”).
`
`Moreover, in cases where requests for termination were denied, the Board has
`
`repeatedly attributed the advanced stage of the proceeding as weighing against
`
`termination. See, e.g., Blackberry Corp. et al. v. MobileMedia Ideas LLC, IPR2013-
`
`00016, Paper 31 at 3 (P.T.A.B. Dec. 11, 2013) (denying motion to terminate due to
`
`7
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`
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`IPR2020-00065
`U.S. Design Patent No. D813,120
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`the advanced stage of the proceeding); Masterimage 3D, Inc. et al. v. Reald Inc.,
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`IPR2015-00035, Paper 30 at 4 (P.T.A.B. June 25, 2015) (denying petitioner’s
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`request to file a motion to terminate where the decision to institute inter partes
`
`review was issued two months prior). That is not the case here; the proceeding is
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`only at a preliminary stage, and LKQ’s request for withdrawal and concomitant
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`dismissal of its Petition and the proceedings is proper.
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`Patent Owner erroneously asserts that LKQ is forum shopping by requesting
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`withdrawal. If LKQ were forum shopping to avoid the Board, LKQ would not
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`continue to file numerous petitions with the Board. Indeed, if costs were equal and
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`the Board’s resources irrelevant, LKQ would like file all challenges against Patent
`
`Owner’s unpatentable designs with the Board. Despite Patent Owner’s opposition,
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`the Board should grant LKQ’s motion. Termination at this preliminary proceeding
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`stage would save the Board and the Parties the time and resources needed to take
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`IPR2020-00065 through trial, if the challenge is instituted. Furthermore, termination
`
`is also a just resolution, as Patent Owner will not be prejudiced by termination at this
`
`preliminary proceeding stage but rather will benefit from preserving its own
`
`resources.
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`V. CONCLUSION
`
`The Board should allow LKQ to withdraw its IPR Petition and then terminate
`
`IPR2020-00065.
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`8
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`IPR2020-00065
`U.S. Design Patent No. D813,120
`
`Dated: March 6, 2020
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`Respectfully submitted,
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`/Barry F. Irwin, P.C./ _
`Barry F. Irwin, P.C.
`Reid Huefner
`Registration No. 57,341
`Irwin IP LLC
`222 South Riverside Plaza, Suite 2350
`Chicago, IL 60606
`Phone: 312.667.6080
`birwin@irwinip.com
`rhuefner@irwinip.com
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`9
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`IPR2020-00065
`U.S. Design Patent No. D813,120
`
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a true
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`copy of this Motion for LKQ to Withdraw and the Board to Dismiss Petition for
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`Inter Partes Review was served on this 6th day of March, 2020, by e-mail upon the
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`following:
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`
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`LEAD COUNSEL
`Dorothy P. Whelan, Reg. No. 33,814
`3200 RBC Plaza
`
`
`
`
`60 South Sixth Street
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`
`
`Minneapolis, MN 55402
`
`
`Tel: 612-335-5070/Fax 877-769-7945
`IPR45343-0015IP1@fr.com
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`
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`Additional electronic service to:
`whelan@fr.com;
`deutsch@fr.com;
`gkim@fr.com; and
`herriges@fr.com.
`
`Patent Owner has consented to service by electronic means.
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`Dated: March 6, 2020
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`BACK-UP COUNSEL
`Craig A. Deutsch, Reg. No. 69,264
`Grace J. Kim, Reg. No. 71,977
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-335-5070/Fax 877-769-7945
`PTABInbound@fr.com
`
`/Reid Huefner/ _
`Reid Huefner
`Registration No. 57,341
`Irwin IP LLC
`222 South Riverside Plaza, Suite 2350
`Chicago, IL 60606
`Phone: 312.667.6080
`rhuefner@irwinip.com
`
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`10
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