Issue 43: PTAB Trial Tracker

Petitioner Allowed to Proceed in "Understudy Role"

In American Honda Motor Co., Inc. v. Neo Wireless, LLC, IPR2023-0791 (P.T.A.B. March 30, 2023), American Honda Motor Co., Inc. ("Honda") filed a "copycat" Petition requesting institution of an inter partes review of claims 1–14 of U.S. Patent No. 10,075,941. Concurrently, Honda filed a Motion for Joinder (Paper 2) seeking to be joined as a party to Volkswagen Group of America, Inc. v. Neo Wireless, LLC, IPR2022-01537 ("Volkswagen IPR").

The Board determined that institution was warranted on the same grounds instituted in Volkswagen IPR because it was "substantively identical" to the Volkswagen IPR petition and "it present[ed] no new grounds of unpatentability." Paper 11 at 9. Both petitions challenged the same claims, on the same grounds, using the same prior art.Id. at 11. The Board also granted Honda's Motion for Joinder because Honda showed that joinder would not impact the trial schedule.Id.