Jaguar Land Rover Limited

Patent Trials and Appeals Board

Oct 2, 2020

IPR2019-01539 (P.T.A.B. Oct. 2, 2020)

Trials@uspto.gov Paper 16
Tel: 571-272-7822 Date: October 2, 2020
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.

IPR2019-01539
Patent RE46,828 E

Before BARRY L. GROSSMAN, KEVIN W. CHERRY, and
BRENT M. DOUGAL, Administrative Patent Judges.
GROSSMAN, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request for Rehearing of
Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

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Bentley Motors Limited and Bentley Motors, Inc. (“Petitioner”) filed
a petition (Paper 1, “Pet.”) to institute an inter partes review of claims 21,
24, 30, 32–34, 37, 39, 41–43, 45, and 46 (collectively the “challenged
claims”) of U.S. Patent No. RE46,828 E (Ex. 1001, “the ’828 patent”).
Jaguar Land Rover Limited (“Patent Owner”) timely filed a Preliminary
Response. Paper 7 (“Prelim. Resp.”). In its Preliminary Response, Patent
Owner requested that the Board apply its discretion under 35 U.S.C.
§ 314(a) to deny institution of the requested proceeding due to the advanced
state of a parallel district court litigation1 in which the same issues have been
presented. Prelim. Resp. 49‒52 (citing NHK Spring Co. v. Intri-Plex Techs.,
Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential,
designated May 7, 2019)).
The Board denied institution pursuant to 35 U.S.C. § 314(a). Paper 9
(Mar. 10, 2020) (Decision Denying Institution or “DDI”). When the
Decision Denying Institution was entered, a jury trial was scheduled for
October 13, 2020. DDI, 14. The trial date was five months before a PTAB
Final Decision would have issued if we had instituted trial. Id. In our
Decision Denying Institution, we found that the factors weighing most in
favor of discretionary denial were (1) substantial overlap in patent claims
challenged in the Virginia District Court litigation; (2) overlap in the
obviousness theories and references that Petitioner is pursuing here and in
the Virginia District Court litigation; (3) the advanced stage of the Virginia

1 Jaguar Land Rover Limited v. Bentley Motors Limited and Bentley Motors,
Inc., Civ. No. 2:18-cv-320 (E.D. Va.) (“the Virginia District Court
litigation”).
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District Court litigation; and (4) the significant investment by the Court and
parties into the Virginia District Court litigation. Id. at 15.
Petitioner filed a Request for Rehearing of the Denial Decision.
Paper 10 (“Req. Reh’g” or “Request for Rehearing”). Concurrently
therewith, Petitioner requested that the Board’s Precedential Opinion Panel
(“POP”) reconsider the Denial Decision. Paper 11; Ex. 3002 (“POP
Request”). The issue submitted for POP review was “whether under
35 U.S.C. Section 314(a) and NHK Spring, the state of a parallel district
court action involving a common invalidity dispute can be the sole or
primary basis for denying institution.” Ex. 3002, 2.
On June 16, 2020, the POP declined to review Petitioner’s POP
Request. Paper 12. We now consider Petitioner’s Request for Rehearing.
By an e-mail dated June 19, 2020 (see Ex. 3003), Petitioner contacted
the Board to “call to the Board’s attention” a June 16, 2020 decision in Sand
Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
IPR2019-01393, Paper 24 (PTAB, June 16, 2020), wherein the parties were
provided an opportunity to address the factors relevant to a discretionary
denial discussed in Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11
(PTAB Mar. 20, 2020 (designated Precedential May 5, 2020). Our Decision
Denying Institution in the proceeding before us was mailed on March 10,
2020, which was before the Apple v. Fintiv proceeding was decided or
designated precedential.
Petitioner’s e-mail (Ex. 3003) also informed us that the status of the
related Virginia District Court litigation] “has changed since the Board’s
original decision,” stating only that “the October 13, 2020 trial date has now
been rescheduled for February 23, 2021.” Ex. 3003. The trial date was
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changed based on a Joint Motion to Extend Deadlines filed by the parties
seeking “to extend the currently pending deadlines set in the September 25,
2019 Scheduling Order (ECF No. 55, ‘Scheduling Order’), and other
currently pending deadlines, by sixty (60) to ninety (90) days . . . in light of
complications related to the coronavirus disease (COVID-19) outbreak.”
Ex. 1064. The Court granted the Joint Motion and issued an “Agreed Order”
revising the Scheduling Order due dates, with a new trial date “TBD.”
Ex. 3004. On May 5, 2020, the Court issued an Order stating the new trial
date is February 23, 2021. Ex. 3005.
We determined that supplemental briefing of the Request for
Rehearing was warranted on the application of Apple v. Fintiv to the facts of
this case. Paper 13. The parties filed supplemental rehearing briefs. Paper
14 (Petitioner's Supplemental Rehearing Brief) (“Pet. Suppl. Reh’g. Br.”);
Paper 15 (Patent Owner’s Supplemental Rehearing Response) (“PO Suppl.
Reh’g. Resp.”)).
We now consider Petitioner’s Request for Rehearing of our Decision
Denying Institution.
I. ANALYSIS
A. Request for Rehearing
When rehearing a decision on institution, the Board reviews the
decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
discretion may arise if the decision is based on an erroneous interpretation of
law, if a factual finding is not supported by substantial evidence, or if an
unreasonable judgment is made in weighing relevant factors. Star Fruits
S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
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Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
1305, 1315–16 (Fed. Cir. 2000).
The burdens and requirements of a request for rehearing are stated in
37 C.F.R. § 42.71(d):
(d) Rehearing. . . . The burden of showing a decision should be
modified lies with the party challenging the decision. The
request must specifically identify all matters the party believes
the Board misapprehended or overlooked, and the place where
each matter was previously addressed in a motion, an opposition,
or a reply.
Petitioner asserts that “under NHK Spring, the Board here abused its
§ 314(a) discretion because it lacked an independent reason for denying
review beyond the existence of a related district court action.” Req.
Reh’g 3. According to Petitioner, “NHK Spring does not give the Board
authority to deny institution solely or primarily because a related district
court action could potentially resolve the overlapping invalidity disputes
before a final decision by the Board.” Id. We disagree. Petitioner has
provided no persuasive authority supporting its interpretation of NHK
Spring. Binding precedent, discussed below, is contrary to Petitioner’s
argued interpretation.
The Board determines whether to institute a trial on behalf of the
Director. 37 C.F.R. § 42.4(a). The Director “possesses broad discretion in
deciding whether to institute review.” Saint Regis Mohawk Tribe v. Mylan
Pharm. Inc., 896 F.3d 1322, 1327 (Fed. Cir. 2018), cert. denied, 139 S. Ct.
1547 (2019) (citing Oil States Energy Services v. Greene’s Energy Group,
LLC, 138 S. Ct. 1365, 1371 (2018)); see also Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a
petition is a matter committed to the Patent Office’s discretion.”). “If the
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Director decides not to institute, for whatever reason, there is no review. In
making this decision, the Director has complete discretion to decide not to
institute review.” Saint Regis Mohawk Tribe, 896 F.3d at 1327 (emphases
added) (citing Oil States, 138 S. Ct. at 1371) (“The decision whether to
institute inter partes review is committed to the Director’s discretion.”).
“The Director bears the political responsibility of determining which cases
should proceed. While he has the authority not to institute review on the
merits of the petition, he could deny review for other reasons such as
administrative efficiency” (id.) or because a related district court action will
resolve overlapping patentability disputes before a final decision by the
Board. See Apple v. Fintiv, IPR2020-00019, Paper 11, 5–6 (identifying six
factors to be considered when a patent owner raises an argument for
discretionary denial due to the advanced state of a parallel district court
proceeding). In evaluating these factors, “the Board takes a holistic view of
whether efficiency and integrity of the system are best served by denying or
instituting review.” Id. at 6. We address below the Apple v. Fintiv factors
based on the evidence and arguments of the parties.
1. Whether the court granted a stay or evidence
exists that one may be granted if a proceeding is instituted
The District Court has not granted a stay. We have not been directed
to any evidence that either party requested a stay.
Petitioner states “Petitioner will move immediately for a stay of the
district court action if the Board institutes this IPR.” Pet. Suppl. Reh’g.
Br. 4. Whether the Court would grant a stay is unknown.
On the record before us, the parties fail to show persuasively that the
District Court would, or would not, grant a stay. Accordingly, Fintiv
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factor 1 weighs evenly for each party. See Apple Inc. v. Seven Networks,
LLC, IPR2020-00506, Paper 11 at 7 (PTAB Sept. 1, 2020).
2. Proximity of the Court’s trial date to the Board’s
projected statutory deadline for a final written decision
The Court amended the original trial date and reset the trial date for
February 23, 2021. Ex. 3005. This revised trial date was in light of a Joint
Motion of the parties to extend due dates because of complications related to
the COVID-19 pandemic. Ex. 1064.
Assuming we were to institute an inter partes review in this
proceeding in October, 2020, our Final Decision would be due in October,
2021. This would be about eight months after the February 23, 2021, trial
date.
When a district court’s trial date occurs before the projected statutory
deadline, the Board generally weighs this factor in favor of exercising
authority to deny institution under § 314(a). Fintiv, Paper 11 at 9. However,
other variables here contribute to the uncertainty that the jury trial will occur
on February 23, 2021, as currently scheduled. See Ex. 3005. The
coronavirus pandemic already disrupted the trial date once, and the situation
continually evolves. The parties’ previous Joint Motion to extend District
Court scheduling order dates (see Ex. 1064 (District Court Order granting
the Joint Motion to Extend Deadlines because of the COVID-19 pandemic))
and uncertainty as to whether the trial will actually go forward on February
23, 2021, the presently scheduled date, diminishes the extent to which this
factor weighs in favor of exercising discretion to deny institution. See Sand
Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
IPR2019-01393, Paper 24 at 9–10 (June 16, 2020) (informative) (“because
of the number of times the parties have jointly moved for and the district
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court agreed to extend the scheduling order dates . . . and the uncertainty that
continues to surround the scheduled trial date, we find that this factor weighs
marginally in favor of not exercising discretion to deny institution under
35 U.S.C. § 314(a)”).
Given the substantial gap of almost eight months between the trial
date and the final written decision deadline in this proceeding, assuming we
granted rehearing and instituted a trial in October, 2020, it is unlikely, based
on the present record, that the trial date would be delayed to a date after a
final written decision in this proceeding as a result of COVID-19.
Therefore, given that the District Court’s currently scheduled trial date
falls about eight months before the projected statutory deadline for a final
written decision, but accounting for the uncertainty as to whether the trial
actually will start on the currently scheduled date, Fintiv factor 2 weighs
moderately in favor of exercising our discretion to not institute a trial. See
Apple v. Seven Networks, IPR2020-00506, Paper 11 at 7–9.
3. Investment in the parallel proceeding
by the Court and the parties
We discussed this factor in our Decision Denying Institution under the
heading “Stage of the Litigation.” DDI, 12–15. Since our Decision, the
District Court and the parties have continued to invest significant time and
resources in getting this case ready for trial. See, e.g., Ex. 3009, which is an
excerpt of the District Court docket for the last 90 days as of October 1,
2020. The Court held a remote Markman hearing on May 21, 2020 via
ZoomGov and has remained very active since that time. Ex. 1065
(transcript), Ex. 3006, Ex. 3009.
As explained in the Apple v. Fintiv Order, “[t]his investment factor is
related to the trial date factor, in that more work completed by the parties
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and the court in the parallel proceeding tends to support the arguments that
the parallel proceeding is more advanced, a stay may be less likely, and
instituting would lead to duplicative costs.” Apple v. Fintiv, Paper 11 at 10.
Based on the existing District Court PACER docket and the current
schedule and trial date (see Ex. 1064, 3005), before we would institute an
inter partes review in this case, which likely would be by the end of
October, 2020 (assuming we determine to institute), the District Court and
the parties will have invested significant time and resources in getting this
case ready for trial:
 The Court issued an Opinion and Order denying a motion to
dismiss under 35 U.S. § 101 (31 pages – analyzing the patented
technology, the claims, and other evidence and concluding
claims were patent-eligible);
 Fact discovery closed on January 17, 2020;
 Claim construction has been fully briefed and a Markman
hearing was held on May 21, 2020 (Ex. 1065, 3006);
 Opening, Responsive, and Rebuttal Expert Reports were due by
September 24, 2020 (Ex. 1064);
 Expert discovery closes on October 14, 2020 (Ex. 1064);
 Dispositive motions are due October 21, 2020 (Ex. 1064).
In this case, the substantial work already completed by the parties and
the Court in the parallel proceeding are facts that collectively weigh strongly
in favor of denying institution and avoiding duplication of efforts at PTAB.
Moreover, if we were to institute a proceeding, the following
additional investment of time and resources by the District Court and the
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parties will occur after institution but before our final decision in October,
2021 (again, assuming we institute a proceeding in October ,2020):
 Pretrial disclosures are due November 24, 2020 (Ex. 1064);
 Attorney’s pre-trial conference will be held January 29, 2021
(Ex. 3005);
 Final Pretrial Conf. will be held February 5, 2021(Ex. 3005);
 Voir Dire and Jury Instructions will be filed on February 16,
2021 (Ex. 3005); and
 The trial will begin February 23, 2021.
These additional facts also collectively weigh strongly in favor of
denying institution.
4. Overlap between issues raised in the petition
and in the parallel proceeding
In our Decision Denying Institution, we discussed the overlap of
issues between this IPR proceeding and the District Court case. DDI 9–12
(discussing overlap of claims and overlap of references on the issue of
patentability/validity). We found there is substantial duplication between
the claims at issue in this IPR proceeding and the claims at issue in the
District Court. Id. at 11. We also found we find there is duplication
between the evidence and grounds of unpatentability in this IPR proceeding
and the evidence and grounds of invalidity asserted in the District Court.
DDI, 12. We determined these findings weigh in favor of discretionary
denial. Id. at 11, 12. These facts have not changed. This factor continues to
weigh in favor of discretionary denial of an inter partes review.
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5. Whether the petitioner and the defendant in the
parallel proceeding are the same party
The parties in the IPR proceeding before us (Bentley Motors Limited
and Bentley Motors Inc. as Petitioners, and Jaguar Land Rover Limited, as
Patent Owner) are identical to the parties in the District Court.
Accordingly, this factor weighs in favor of discretionary denial.
6. Other circumstances that impact the Board’s
exercise of discretion, including the merits.
The factors considered in the exercise of discretion are part of a
balanced assessment of all the relevant circumstances in the case, including
the merits. Apple v. Fintiv, IPR2020-00019, Paper 11, 14. For example, if
the merits of a ground raised in the petition seem particularly strong on the
preliminary record, this fact has favored institution. Id. at 14–15. By
contrast, if the merits of the grounds raised in the petition are a closer call,
then that fact has favored denying institution when other factors favoring
denial are present. Id. at 15. Here, we determine that Petitioner does not
have a particularly strong merits argument.
In a related Petition in IPR2019-01502, Petitioner herein challenged
the same claims of the same patent as are challenged in the proceeding
before us. See IPR2019-01502, Paper 10 (the “1502 IPR”). The prior art
asserted, and the arguments made, in the 1502 IPR are substantially similar
to those in the proceeding before us. We determined that the prior art in the
1502 IPR failed “to describe a vehicle control system ‘arranged to control a
plurality of vehicle subsystems,’ as recited in” all the challenged claims.
Id. at Paper 10, 11. Our preliminary analysis of the merits here indicates the
same problem with Petitioner’s case.
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The fact that the merits of this proceeding are not strong favors
discretionary denial.
Petitioner argues that other identified real parties in interest in this
IPR proceeding, Volkswagen AG, Volkswagen Group of America, Inc.
(“Volkswagen”), Dr. Ing. h.c.F. Porsche AG (“Porsche”), and Audi AG
(“Audi”), are not defendants in the District Court. Pet. Suppl. Reh’g. Br. 6–
72. While this stated fact is true, it is irrelevant to our determination of
whether we exercise discretion to deny a petition.
Our rules require that parties to a proceeding provide certain
mandatory notices, including identification of the “real parties-in-interest.”
37 C.F.R. § 42.8(b)(1). One of the core functions of the “real party-in-
interest” requirement is to assure proper application of the statutory estoppel
provisions. Consol. Trial Practice Guide 12–13 (Nov. 2019); see also
35 U.S.C. § 315(e) (stating that estoppel applies only when the IPR
proceeding “results in a final written decision under section 318(a).”). If we
do not institute an IPR proceeding, there is no final written decision.
Petitioner also argues “the real parties in interest are now time-barred
from filing another IPR petition.” Pet. Suppl. Reh’g. Br. 7. This Petition
was filed on August 24, 2019, and these parties were time-barred days later
on August 30, 2019 based on the one-year time bar established in 35 U.S.C.
§ 315(b) (“An inter partes review may not be instituted if the petition
requesting the proceeding is filed more than 1 year after the date on which
the petitioner, real party in interest, or privy of the petitioner is served with a
complaint alleging infringement of the patent.”). See Ex. 1070 (Affidavit of

2 See Ex. 2035, identifying Bentley, Porsche, and Audi as part of the
Volkswagen corporate family.
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Service on Petitioner, Bentley Motors, Inc., on August 30, 2018). This
proceeding does not concern the other identified real parties, and therefore,
this argument is not persuasive towards the duplication of effort at PTAB
based on the parallel district court proceeding.
7. Conclusion
Under Fintiv, the Board takes “a holistic view of whether efficiency
and integrity of the system are best served by denying or instituting review.”
Fintiv, Paper 11 at 6. Fintiv factor 1 weighs evenly for each party. Fintiv
factor 2 weighs moderately in favor of exercising our discretion to not
institute a trial. Fintiv factor 3 weighs strongly in favor of denying
institution and avoiding duplication at PTAB of discovery and other work by
the parties and the Court. Fintiv factor 4 weighs in favor of discretionary
denial of an inter partes review. Fintiv factor 5 weighs in favor of
discretionary denial. Fintiv factor 6 favors discretionary denial. Thus, based
on this analysis, we determine under the particular circumstances of this
case, the interests of efficiency and integrity of the patent system tilt toward
invoking our discretionary authority under § 314(a) to deny institution of the
Petition.
Based on our analysis, Petitioner has not shown that we abused our
discretion in denying the Petition. Accordingly, the request for rehearing is
denied.
II. ORDER
For the reasons given, it is:
ORDERED that the request for rehearing is denied.
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PETITIONER:

Edgar Haug
Brian Murphy
Robert Colletti
HAUG PARTNERS LLP
ehaug@haugpartners.com
bmurphy@haugpartners.com
rcolletti@haugpartners.com

PATENT OWNER:

Jon Strang
Clement Naples
LATHAM & WATKINS LLP
clement.naples@lw.com
jonathan.strang@lw.com