Honda and Ford slam IPR denial of wireless patents based on multiple petitions
Carmakers accused of infringing patents owned by a non-practising entity say PTAB erred in application of previous case law | Ford says basis for denial would set ‘dangerous new precedent’.
Honda and Ford have asked for the annulment of separate Patent Trial and Appeal Board (PTAB) decisions to not review wireless communications patents that they were accused of infringing.
The automakers made the request to US Patent and Trademark Office (USPTO) director Kathi Vidal, in filings submitted on Tuesday (February 13). Both firms took issue with the PTAB’s denial of inter partes review (IPR) based on previous petitions regarding the same patents.
In March 2022, Honda and fellow carmaker Volkswagen were accused of infringing US patent 10,771,302, owned by US entity Neo Wireless, entitled “Channel Probing Signal for a Broadband Communication System”.
This included features such as “remote lock and unlock, remote start and remote start scheduling”, “roadside assistance” and “Wi-Fi hotspot”, according to the lawsuit.
The PTAB denied Honda’s request for IPR in November last year based on factors in General Plastic Industrial v Canon Kabushiki Kaisha, expanded in Valve Corp v Electronic Scripting Products et al, regarding overlap in challenged claims by different petitioners and the relationship between those petitioners.
Also in November last year, the PTAB denied Ford’s request for an IPR of Neo Wireless’s US patent 10,447,450, entitled “Method and System for Multi-carrier Packet Communication with Reduced Overhead”.
Ford’s petition challenged the same claims as those challenged in the petitions filed by tech company Dell as well as Volkswagen, the Board said, concluding that Ford had “a significant relationship” with Volkswagen based on “joint claim construction and infringement contentions” in relation to the ‘450 patent.
‘Dangerous new precedent’
In its request to overturn the PTAB’s decision this week, Honda said Neo Wireless “improperly” sought to extend Valve Corp “so that a patent owner may sue an entire industry, consolidate its actions, and then restrict the industry to a single IPR”.
Neo’s basis for this was the co-defendants’ joint preparation of invalidity contentions in district court litigation, Honda said, claiming this would amount to “an abandonment of the Patent Office’s statutory mandate to improve patent quality”.
Honda said it was unaware that Volkswagen planned to file an IPR, that the two carmakers did not coordinate their IPRs, and that it purposely avoided “playbooking” based on Volkswagen's IPR by selecting distinct prior art applicable against a later priority date.
Neo had failed to support that joint invalidity contentions created a relationship between Honda and Volkswagen that deserved discretionary denial, Honda said.
Ford also hit back at the PTAB’s reasoning for denying IPR based on Volkswagen's petition, stating that the two firms did not coordinate on their respective petitions.
The carmaker said it should not be denied an opportunity for IPR simply because it had the misfortune of being sued “by the same entity who sued Volkswagen in a different lawsuit, in a different court, concerning different products”.
“Is it fair that a patentee can sue an entire industry at the same time, in different courts concerning different products, but only one defendant is permitted to pursue an IPR using its chosen grounds?” Ford asked Vidal to consider.
“No authority supports the dangerous new precedent Neo seeks,” Ford said.
The cases are Honda v Neo Wireless and Ford v Neo Wireless.
Honda is represented by Fish & Richardson and Ford by Brooks Kushman.
Counsel for Neo Wireless are Lowenstein & Weatherwax and Caldwell, Cassady & Curry.
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