UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD VALEO NORTH AMERICA, INC., VALEO S.A., VALEO GMBH, VALEO SCHALTER UND SENSOREN GMBH, AND CONNAUGHT ELECTRONICS LTD., Petitioners, v. MAGNA ELECTRONICS, INC., Patent Owner Case IPR2014-01203 (Patent 7,859,565) Case IPR2014-01204 (Patent 8,386,114) Case IPR2014-01206 (Patent 7,877,175) Case IPR2014-01208 (Patent 7,991,522) PATENT OWNER S RESPONSE TO PETITIONER S BRIEF REGARDING REAL PARTIES-IN-INTEREST VALEO NORTH AMERICA, INC. AND VALEO GMBH 1 1 Authorized by the Order of November 26, 2014 (Paper 11).
Exhibit No. TABLE OF EXHIBITS Description 2001 Information Disclosure Statement filed July 13, 2007 in U.S. Patent Appl. No. 10/643,602 (now the 565 patent) 2002 Definition of portion, Merriam-Webster Dictionary, accessed at http://www.merriam-webster.com/dictionary/portion 2003 Definition of infrared, Merriam-Webster Dictionary, accessed at http://www.merriam-webster.com/dictionary/infrared 2004 Excerpt from Valeo s 2013 Consolidated Financial Statements 2005 Exhibit C attached to Schweibenz Declaration, Federal-Mogul Corp. et al. v. Valeo Electrical Systems, Inc. et al., 2:13-cv- 11627-AJT-MKM (E.D. M.I.), filed August 15, 2014 2006 Summons and Complaint Return of Service, Magna Electronics Inc. v. Valeo, Inc. et al., Case No. 2:13-cv-11627-AJT-MKM (E.D. M.I.), served July 26, 2013 2007 Certificate of Merger (DE) of Valeo, Inc. with and into Valeo Electrical Systems, Inc., effective December 31, 2013 2008 Valeo Inc.ʼs Statement of Disclosure of Corporate Affiliations and Financial Interest, Magna Electronics Inc. v. Valeo, Inc. et al., 2:14-cv-10540, dated August 15, 2014 2009 Documents related to removal of Valeo, Inc., as a party and reforming captions, Valeo, Inc. et al., v. Federal-Mogul Corp. et al., 2:13-cv-14393 (E.D. M.I.) 2010 Complaint Under Section 337 in the matter of Windshield Wipers and Components Thereof, ITC-337-TA-928, filed July 25, 2014 - i -
Under 35 U.S.C. 312(a)(2), a petition must identify all real parties-ininterest, and one that fails to is incomplete under 37 C.F.R. 42.106(b) and cannot be accorded a filing date. (See, e.g., IPR2013-00618, Paper 15 and IPR2014-00720, Paper 8.) As in Zoll and First Data, correction of the deficiency here is futile because the one-year period of 35 U.S.C. 315(b) lapsed on July 26, 2014. (Ex. 2006.) These petitions were filed on July 25, 2014, well after the December 31, 2013 formation of Valeo North America, Inc. and dissolution of Valeo, Inc. (Ex. 2007.) Neither Magna nor the public should face an IPR filing by a non-existent party. In any event, prejudice here is irrelevant. Only Valeo can provide complete notice, and has not timely done so. Valeo asserts that Petitioners only recently learned of this change (Paper 10, p. 2) and that it was brought to the attention of the Valeo IP director (Paper 10, p. 1) in response to Magna s POPRs. Valeo s counsel provided a certification under E.D. Mich. LR 83.4 for Valeo, Inc. on August 15, 2014 (Ex. 2008), yet other Valeo IP counsel were aware of the nonexistence of Valeo, Inc. at least as early as July 22, 2014, before these petitions were even filed. (Exs. 2009, 2010.) Valeo, Inc. ceased to exist in December 2013, and Valeo knew (or could have or should have known) this on the July 25, 2014 filing date of these petitions. The Board should therefore not institute these IPRs based on Valeo s failure to comply with 35 U.S.C. 312(a)(2). 1
Respectfully submitted, DATE: December 2, 2014 By: /David K.S. Cornwell/ David K.S. Cornwell, Registration No. 31,944 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, NW WASHINGTON, D.C. 20005 (202) 371-2600 Attorney for Patent Owner Magna Electronics, Inc. 2
CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the enclosed PATENT OWNER S RESPONSE TO PETITIONER S BRIEF REGARDING REAL PARTIES-IN-INTEREST VALEO NORTH AMERICA, INC. AND VALEO GMBH was served electronically via e-mail on December 2, 2014, in its entirety on Attorneys for Petitioners Valeo North America, Inc., et al.: Tammy J. Terry (Lead Counsel) Aly Z. Dossa (Back-up Counsel) Seema Mehta (Back-up Counsel) Peter C. Schechter (Back-up Counsel) OSHA LIANG LLP 909 Fannin Street, Suite 3500 Houston, TX 77010-1034 terry@oshaliang.com dossa@oshaliang.com mehta@oshaliang.com schechter@oshaliang.com /David K.S. Cornwell/ David K.S. Cornwell, Registration No. 31,944 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, NW WASHINGTON, D.C. 20005 (202) 371-2600 Attorney for Patent Owner Magna Electronics, Inc.