UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD VALEO, INC., VALEO S.A., VALEO GMBH, VALEO SCHALTER UND SENSOREN GMBH, AND CONNAUGHT ELECTRONICS LTD., Petitioner, v. MAGNA ELECTRONICS, INC., Patent Owner. Case IPR (Patent 7,859,565) Case IPR (Patent 8,386,114) Case IPR (Patent 7,877,175) Case IPR (Patent 7,991,522) Before JAMESON LEE, PHILLIP J. KAUFFMAN, and MATTHEW R. CLEMENTS, Administrative Patent Judges. PETITIONERS BRIEF REGARDING REAL PARTIES-IN-INTEREST VALEO NORTH AMERICA, INC. AND VALEO GMBH

2 Petitioners Valeo North America, Inc., Valeo S.A., Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd. (collectively Valeo or Petitioners ) submit this brief to respond to the issues of whether Valeo, Inc. and Valeo GmbH were properly listed as real-parties-in-interest in these proceedings, as requested by the Board in Paper No. 7. In its Petitions, Valeo identifies Valeo, Inc., Valeo, S.A., Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd. as realparties-in-interest. Paper 1, 3. All of these parties were named defendants in the related litigation, Magna Electronics Inc. v. Valeo, Inc., et al., No. 2:13-cv (E.D. Mich.), as identified in the Petition. Paper 1, 4; Exhs and Effective December 31, 2013, Valeo Inc. merged into Valeo Electrical Systems, Inc., to form Valeo North America, Inc., which is the legal successor to the original entity, Valeo, Inc. Exh The merger and name change was brought to the attention of the Valeo IP director who authorized the filing of the IPR petitions when Patent Owner raised the issue for the first time in its Preliminary Responses on November 3, On November 14, 2014, after seeking Board authorization, Petitioners filed updated mandatory notices and powers of attorney accordingly. Papers 8 and 9. Effective January 1, 2013, Valeo GmbH merged into and transferred its assets in their entirety with all rights and obligations to its sole shareholder, Valeo 1

3 Holding Deutschland GmbH, which continues to hold the name Valeo GmbH, and is the legal successor to the original entity. Exh. 1023, 4 and 10. When Magna Electronics, Inc. filed its lawsuit against Valeo GmbH in March 2013 naming Valeo GmbH as a defendant, it would have been against this same company, as identified in the Petition. Both parties were properly listed as real-parties-in-interest in these proceedings. Both are named defendants in the related litigation and, to the extent there has been a merger and name change with respect to Valeo, Inc., Petitioners only recently learned of this change and promptly updated their mandatory notices accordingly. Patent Owner has not been prejudiced by this change, there is no attempt to evade applicable estoppel provisions, nor does this change cause Petitioners petitions to be fatally defective, as all real-parties-in-interest known to the Petitioners were properly identified at the time the petitions were filed. To the extent there has been any error, it was minor and, therefore, can be corrected because the current entities are legal successors to their original entities and all other real-parties-in-interest also had standing to request IPR. Dated: November 18, 2014 Respectfully submitted, /s/tammy J. Terry Tammy J. Terry (Reg No. 69, 167) Terry@oshaliang.com Aly Z. Dossa (Reg. No. 63,372) Dossa@oshaliang.com Seema Mehta (Reg No. 56,235) 2

4 Peter C. Schechter (Reg. No. 31,662) OSHA LIANG LLP 909 Fannin Street, Suite 3500 Houston, Texas Tel: Fax: Counsel for Petitioners Valeo North America, Inc., Valeo S.A., Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd. 3

5 CERTIFICATE OF SERVICE The undersigned certifies service pursuant to 37 C.F.R. 42.6(e) a copy of this Petitioners Brief Regarding Real Parties-In-Interest, Valeo North America, Inc. and Valeo GmbH upon Magna Electronics, Inc., via to the following counsel of record for the patent owners: Lead Counsel: Timothy A. Flory, Esq. USPTO Reg. No. 42,540 Flory@glbf.com Terence J. Linn USPTO Reg. No. 30,283 linn@glbf.com Gardner, Linn, Burkhart & Flory, LLP 2851 Charlevoix Drive SE, Suite 207 Grand Rapids, Michigan Dated: November 18, 2014 David K.S. Cornwell USPTO Reg. No. 31,944 davide-ptab@skgf.com Salvador M. Bezos USPTO Reg. No. 60,889 Sterne, Kessler, Goldstein & Fox PLLC 1100 New York Avenue NW Washington, DC Respectfully submitted, /s/tammy J. Terry Tammy J. Terry (Reg No. 69, 167) Terry@oshaliang.com OSHA LIANG LLP 909 Fannin Street, Suite 3500 Houston, Texas Counsel for Petitioners Valeo North America, Inc., Valeo S.A., Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd. i