Toyota Motor Corporationv.American Vehicular Sciences LLC

Patent Trial and Appeal Board

Jan 29, 2015

10302105 (P.T.A.B. Jan. 29, 2015)

Trials@uspto.gov Paper 10
571-272-7822 Entered: January 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TOYOTA MOTOR CORPORATION,
Petitioner,

v.

AMERICAN VEHICULAR SCIENCES LLC,
Patent Owner.
____________

Case IPR2015-00261
Patent 6,772,057 B2
____________

Before JAMESON LEE, TREVOR M. JEFFERSON, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION
Denying Inter Partes Review and Joinder
37 C.F.R. §§ 42.108 and 42.122(b)

I. BACKGROUND
Toyota Motor Corporation (“Petitioner” or “Toyota”) filed a Petition
for inter partes review of claims 1–4, 7–10, 31, 41, 56, 59–62, and 64 of
U.S. Patent No. 6,772,057 B2 (Ex. 1101, “the ’057 patent”). Paper 1
(“Pet.”). Along with the Petition, Petitioner filed a Motion for Joinder,
IPR2015-00261
Patent 6,772,057 B2
2
seeking to join with Mercedes-Benz USA, LLC v. American Vehicular
Sciences LLC, IPR2014-00646. Paper 3 (“Mot.”). American Vehicular
Sciences LLC (“Patent Owner” or “AVS”), filed a Preliminary Response
and an Opposition to the Motion for Joinder. Paper 9 (“Prelim. Resp.”);
Paper 7 (“Opp.”). Petitioner filed a Reply to Patent Owner’s Opposition to
the Motion for Joinder. Paper 8. We have jurisdiction under 35 U.S.C.
§ 314.
For the reasons discussed below, we deny Petitioner’s Motion for
Joinder and do not institute an inter partes review as to the challenged
claims of the ’057 patent.
A. Related Proceedings
Petitioner states that the ’057 patent is the subject of the following
district court proceeding: American Vehicular Sciences LLC v. Toyota
Motor Corp., No. 14-CV-13019 (E.D. Mich.). Pet. 2. Petitioner previously
filed a petition for inter partes review of the ’057 patent in Toyota Motor
Corp. v. American Vehicular Sciences LLC, IPR2013-00419. See Pet. 2.
Also, the parties indicate that Petitioner filed a request for ex parte
reexamination of the ’057 patent on November 13, 2014, which has been
assigned Reexamination Control No. 90/020,077. Pet. 3; Paper 6, 2.
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B. Asserted Grounds of Unpatentability
Petitioner contends that the challenged claims are unpatentable based
on the following grounds (Pet. 8–27):
Reference(s) Basis Claims
Lemelson
1
35 U.S.C. § 103(a)
1–4, 7–10, 41, 56, 59–61,
and 64
Lemelson and Nishio
2
35 U.S.C. § 103(a)
1–4, 7–10, 41, 56, 59–61,
and 64
Lemelson and
Borcherts
3

35 U.S.C. § 103(a) 31 and 62
II. ANALYSIS
A. Motion for Joinder
We first address Petitioner’s Motion for Joinder under 35 U.S.C.
§ 315(c) and 37 C.F.R. § 42.122(b) seeking to join with Mercedes-Benz
USA, LLC v. American Vehicular Sciences LLC, IPR2014-00646. Petitioner
timely filed the Motion within one month after the institution of IPR2014-
00646. See 37 C.F.R. § 42.122(b).
Joinder of parties is permitted in related review proceedings as set
forth in 35 U.S.C. § 315(c), which provides:
(c) JOINDER.—If the Director institutes an inter partes review,
the Director, in his or her discretion, may join as a party to that
inter partes review any person who properly files a petition
under section 311 that the Director, after receiving a
preliminary response under section 313 or the expiration of the

1
U.S. Patent No. 6,553,130, issued Apr. 22, 2003 (Ex. 1102).
2
European Patent Application Publication No. 0582236A1, published
Feb. 9, 1994 (Ex. 1104).
3
U.S. Patent No. 5,245,422, issued Sept. 14, 1993 (Ex. 1105).
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Patent 6,772,057 B2
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time for filing such a response, determines warrants the
institution of an inter partes review under section 314.
Although 35 U.S.C. § 315(b) bars inter partes review when a petition
is filed more than one year after the petitioner (or the petitioner’s real party-
in-interest or privy) is served with a complaint alleging infringement of the
patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a
request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set
forth in the preceding sentence shall not apply to a request for joinder under
subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b).
In the present case, Petitioner was served with a complaint alleging
infringement of the ’057 patent more than one year prior to filing the
Petition in this proceeding. See Pet. 2. Thus, absent joinder of this
proceeding with IPR2014-00646, institution of inter partes review is barred.
As a moving party, Petitioner has the burden of proof in establishing
entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
motion for joinder should: (1) set forth the reasons why joinder is
appropriate; (2) identify any new grounds of unpatentability asserted in the
petition; (3) explain what impact (if any) joinder would have on the trial
schedule for the existing review; and (4) specifically address how briefing
and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC,
Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15); FAQ
H5 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp
(last visited Jan. 23, 2015).
Petitioner seeks joinder with Mercedes-Benz USA, LLC v. American
Vehicular Sciences LLC, IPR2014-00646. In that proceeding, we authorized
an inter partes review to be instituted as to claims 1, 2, 4, 7, 16, 30, 31, 40,
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41, 43, 46, 56, 59–62, 77, 78, and 81–83 of the ’057 patent. Mercedes-Benz
USA, LLC v. American Vehicular Sciences LLC, Case IPR2014-00646
(Paper 13). Thereafter, Mercedes-Benz USA, LLC and AVS filed a joint
motion to terminate IPR2014-00646, along with a true copy of the written
settlement agreement between the parties, in accordance with 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(b). Mercedes-Benz USA, LLC v. American
Vehicular Sciences LLC, Case IPR2014-00646 (Paper 18; Ex. 2001). Upon
consideration of the motion, we entered judgment terminating IPR2014-
00646. Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC,
Case IPR2014-00646 (Paper 25). Because IPR2014-00646 is no longer
pending, it cannot serve as a proceeding to which another proceeding may be
joined. We, therefore, must deny Petitioner’s Motion for Joinder.
Even if IPR2014-00646 had not been terminated, other considerations
weigh in favor of denying Petitioner’s Motion for Joinder. In its Motion,
Petitioner asserts that the issues raised in its Petition are “substantively
identical” to the issues in IPR2014-00646. Mot. 11. Petitioner
acknowledges, however, that there are some differences between its Petition
and the petition in IPR2014-00646. Id. One significant difference is that the
arguments in the Petition rely on the declaration of Dr. Nikolaos
Papanikolopoulos (Ex. 1106), who did not offer testimony in IPR2014-
00646. See id. at 12; Pet. 6, 9–15, 24–27. Petitioner provides no
justification for why another declarant would be necessary in a joined
proceeding. Although Petitioner asserts that its declarant “arrives at the
same conclusions for the same reasons as Mercedes’[s] expert,” Mot. 12, the
declaration of Dr. Papanikolopoulos nonetheless constitutes new evidence
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that would be introduced if this proceeding were joined with IPR2014-
00646.
In addition, the Petition in the present case challenges several
dependent claims that are not at issue in IPR2014-00646. Id. at 12.
Petitioner contends that these claims will not result in any further issues that
will need to be addressed and argued because Patent Owner does not dispute
that Lemelson discloses the additional limitations. Id. Nevertheless, if these
additional claims were included in a joined proceeding, we would need to
determine initially whether the Petition demonstrates there is a reasonable
likelihood Petitioner would prevail in challenging those claims, see
37 C.F.R. § 42.108, and ultimately whether Petitioner has established by a
preponderance of the evidence that the claims are unpatentable, see
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
Furthermore, Petitioner filed an earlier petition for inter partes review
of the ’057 patent—Toyota Motor Corp. v. American Vehicular Sciences
LLC, IPR 2013-00419 (Paper 3). See Pet. 2. That earlier petition was filed
within one year of the date on which Petitioner was served with a complaint
alleging infringement of the ’057 patent. Id. Petitioner could have
presented in the earlier petition the grounds and arguments it now asserts,
but it did not do so. Nor has Petitioner explained sufficiently why the
petition in IPR2013-00419 did not contain the grounds and arguments set
forth in the Petition in this proceeding.
Joinder may be authorized when warranted, but the decision to grant
joinder is discretionary. 35 U.S.C. § 315(c). When exercising that
discretion, the Board is mindful that patent trial regulations, including the
rules for joinder, must be construed to secure the just, speedy, and
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Patent 6,772,057 B2
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inexpensive resolution of every proceeding. See 37 C.F.R. § 42.1(b). In
view of the facts and circumstances of this case, we determine that Petitioner
has not met its burden to show that joinder would be appropriate, even if
IPR2014-00646 had not been terminated.
B. Denial of Inter Partes Review
Petitioner was served with a complaint alleging infringement of the
’057 patent more than one year prior to filing the Petition in this proceeding.
See Pet. 2. Accordingly, in view of the denial of the requested relief of
joinder with IPR2014-00646, institution of an inter partes review as
requested by Petitioner is barred by statute. See 35 U.S.C. § 315(b);
37 C.F.R. § 42.101(b).
III. CONCLUSION
For the foregoing reasons, we deny Petitioner’s motion for joinder.
Because Petitioner is barred under 35 U.S.C. § 315(b) from inter partes
review of the ’057 patent, we do not institute review as to any of the
challenged claims.
IV. ORDER
Accordingly, it is:
ORDERED that Petitioner’s Motion for Joinder is denied; and
FURTHER ORDERED that the Petition is denied as to all challenged
claims and all grounds and that no trial is instituted.

IPR2015-00261
Patent 6,772,057 B2
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FOR PETITIONER:
Matthew Berkowitz
Antony Pfeffer
Thomas Makin
mberkowitz@kenyon.com
apfeffer@kenyon.com
tmakin@kenyon.com

FOR PATENT OWNER:
Thomas J. Wimbiscus
Scott P. McBride
Christopher M. Scharff
McAndrews Held & Malloy
twimbiscus@mcandrews-ip.com
smcbride@mcandrews-ip.com
cscharff@mcandrews-ip.com