Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 14
`Entered: April 2, 2020
`
`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.
`____________
`
`IPR2020-00063 (Patent D828,255 S)
`IPR2020-00065 (Patent D813,120 S)1
`
`____________
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Dismissing Petition
`37 C.F.R. §§ 42.5(a), 42.71(a)
`
`1 This Order addresses issues that are the same in both cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 14
`Entered: April 2, 2020
`
`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.
`____________
`
`IPR2020-00063 (Patent D828,255 S)
`IPR2020-00065 (Patent D813,120 S)1
`
`____________
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Dismissing Petition
`37 C.F.R. §§ 42.5(a), 42.71(a)
`
`1 This Order addresses issues that are the same in both cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2020-00063 Patent D828,255 S
`IPR2020-00065 Patent D813,120 S
`
`
`On March 6, 2020, LKQ Corporation and Keystone Automotive
`Industries, Inc. (collectively “Petitioner”) filed a motion, (“Mot.”), to
`dismiss its petition for inter partes review and terminate these proceedings
`prior to determination of whether the Board will institute trial in each case.
`Paper 11.2 GM Global Technology Operations LLC, (“Patent Owner”),
`filed an Opposition (“Opp.”) to Petitioner’s Motion. Paper 12. For the
`reasons below, we grant Petitioner’s motion in each case.
`Petitioner submits that dismissal is appropriate because the proceeding
`is in its preliminary phase and “the Board has not yet issued a decision on
`institution.” Mot. 6. Dismissal of the Petitions, according to Petitioner, will
`preserve both the Board’s and parties’ resources and “Patent Owner would
`not be prejudiced by LKQ’s withdrawal of its petition and the Board’s
`subsequent dismissal of this case.” Id. Petitioner explains that rather than
`continue these IPR’s, it “seeks to challenge this patent (and others, whenever
`possible) through the more cost-efficient ex parte reexamination, which will
`better use the Parties’ and the Board’s resources.” Id. at 2. Petitioner
`contends that it is not time-barred from filing these same IPR’s again at a
`later date because there is currently no parallel district court litigation.
`Petitioner argues, however, that in view of newly discovered prior art
`references which are not before the Board in these cases, it is most efficient
`and cost effective for Petitioner to address that art, as well as the art
`currently before the Board, in an ex parte reexamination.
`Patent Owner opposes Petitioner’s motion, arguing that Petitioner’s
`desire to dismiss its petition in this case prior to an institution decision is “a
`classic case of road-mapping, [where] LKQ seeks to replace its flawed
`
`2 Unless otherwise noted, we refer to paper numbers in IPR2020-00063,
`
`2
`
`
`
`
`IPR2020-00063 Patent D828,255 S
`IPR2020-00065 Patent D813,120 S
`
`petition with a new request—this time an ex parte reexam—using what it
`learned from GM’s preliminary response.” Opp. 1. For example, Patent
`Owner argues that Petitioner’s “new” art is simply a different reference, i.e.,
`a different picture, of the same vehicle, a Toyota Tundra, as it is relying on
`in at least one proceeding. Id. Patent Owner contends that Patent Owner’s
`reasoning to dismiss the petition in favor of a reexamination procedure “is
`about gamesmanship, not efficiency.” Id. Patent Owner specifically argues
`inter alia, that it would be prejudiced by the dismissal because “GM has
`already expended considerable resources analyzing LKQ’s petition and
`preparing its preliminary response.” Id. at 2–3.
`These proceedings are still in the preliminary proceeding stage and the
`Board has not yet decided the merits of the case, or even whether institution
`is appropriate on the record at this point in the proceedings.3 Patent Owner’s
`arguments concerning the expenditure of resources fail to consider the
`requirements of these proceedings with respect to institution and, more so, if
`trial is instituted. Also, the “undue prejudice” that Patent Owner ascribes to
`itself for having filed a preliminary response, is not particularly persuasive
`as a momentous burden or procedural injustice that must be corrected.
`Indeed, there is no right, for either party as a matter of procedural or legal
`due process, to a decision on the merits. The rules provide us the discretion
`to “take up petitions or motions for decisions in any order” and to “grant,
`deny, or dismiss any petition or motion” or enter any appropriate order. 37
`C.F.R. § 42.71(a). It may be that Patent Owner believes that a determination
`
`
`3 “Preliminary proceeding” is defined as the period from the filing of a
`petition for instituting a trial to the written decision as to whether a trial will
`be instituted. 37 C.F.R. § 42.2.
`
`3
`
`
`
`IPR2020-00063 Patent D828,255 S
`IPR2020-00065 Patent D813,120 S
`
`by the Board denying institution would be in Patent Owner’s favor, and by
`not going forward is thus prejudiced. But neither Patent Owner, nor
`Petitioner, nor the Board know at this point whether institution of this inter
`partes review would, or would not be granted.
`In addition, these are not follow-on petitions and we are not persuaded
`that the preliminary response provides Petitioner with a particularly useful
`roadmap as to how to improve its arguments. See Opp. 6–7 (citing Gen.
`Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at
`17–18 (PTAB Sept. 6, 2017) (precedential)). The term “roadmap” is used in
`the inter partes review context not to refer simply to the preliminary
`response, but more aptly towards using the Board’s decisions to strategically
`improve and update prior art and arguments throughout multiple petitions.
`As we have noted before “[m]ultiple, staggered petitions challenging the
`same patent and same claims raise the potential for abuse.” Gen. Plastic,
`IPR2016-01357, Paper 19 at 17. That is not the situation here. Moreover, in
`this preliminary proceeding, Petitioner could have sought leave to file a
`reply to the preliminary response and further explained its arguments in that
`way.
`We are cognizant of Patent Owner’s concerns and the potential for
`abuse of patent office procedures. We acknowledge that there may be some
`strategic rethinking on the part of Petitioner with respect to challenging the
`’255 and ’120 patents. But in looking to dismiss its Petitions in this case and
`on the facts before us here, we do not find such actions rise to an abuse of
`our processes or apportion significant prejudice to Patent Owner. Also, to
`the extent such maneuvering between inter partes review and other office
`procedures, such as reexamination, could become abusive and redundant, as
`
`4
`
`
`
`IPR2020-00063 Patent D828,255 S
`IPR2020-00065 Patent D813,120 S
`
`noted above, institution is discretionary. The Board has a variety of ways in
`which to adjust and define the equities between parties challenging and
`defending patents where parties abuse our procedures for example by
`reusing the same or similar arguments. See, e.g., Becton, Dickinson & Co. v.
`B. Braun Melsungen AG (§ III.C.5, first paragraph), Case IPR2017-01586,
`Paper 8 (Dec. 15, 2017) (precedential) (The Board was persuaded to exercise
`discretion to not institute under 35 U.S.C. § 325(d) when the same or
`substantially the same prior art or arguments previously were presented to
`the Office in an inter partes review.)
`Under these circumstances at this early juncture, and based on the
`record before us, we exercise our discretion and dismiss the petition under
`37 C.F.R. §§ 42.5, 42.71(a).
`
`ORDER
`
` For the reasons given, it is
`ORDERED that Petitioner’s motions to dismiss its petitions and
`terminate inter partes review in IPR2020-00063 and IPR2020-00065 are
`GRANTED; and
`FURTHER ORDERED that the petitions in IPR2020-00063 and
`IPR2020-00065 are DISMISSED.
`
`5
`
`
`
`IPR2020-00063 Patent D828,255 S
`IPR2020-00065 Patent D813,120 S
`
`
`PETITIONER:
`Barry F. Irwin
`Reid Huefner
`IRWIN IP LLC
`birwin@irwinip.com
`rhuefner@irwinip.com
`
`
`PATENT OWNER:
`
`Dorothy P. Whelen
`Craig A. Deutsch
`Grace J. Kim
`FISH & RICHARDSON P.C.
`whelan@fr.com
`deutsch@fr.com
`gkim@fr.com
`
`
`6
`
`
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