UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________________________________________________________
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`SONY CORPORATION
`Petitioner
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`Patent No. 7,477,284
`Issue Date: Jan. 13, 2009
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`__________________________________________________________________
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`MOTION FOR JOINDER TO RELATED
`INTER PARTES REVIEW IPR2013-000219
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`No. IPR2013-00327
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`__________________________________________________________________
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`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________________________________________
`
`SONY CORPORATION
`Petitioner
`
`Patent No. 7,477,284
`Issue Date: Jan. 13, 2009
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`__________________________________________________________________
`
`MOTION FOR JOINDER TO RELATED
`INTER PARTES REVIEW IPR2013-000219
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`No. IPR2013-00327
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`__________________________________________________________________
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`I. Relief Requested
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), petitioner Sony
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`Corporation (“Sony” or “Petitioner”), hereby moves for joinder of the petition for
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`inter partes review of claims 4, 7 and 38 of U.S. Patent No. 7,477,284 (the “’284
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`Patent,” Sony-1101) filed on even date herewith with inter partes review IPR2013-
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`00219 filed by Petitioner on March 29, 2013 and not yet instituted.
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`II. Statement of Material Facts
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`1. On March 28, 2012, HumanEyes Technologies Ltd. (“HumanEyes”) filed a
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`Complaint against Sony in the International Trade Commission (“ITC”), in which it
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`asserted that Sony was infringing claims 1, 2, 3, 10, 20, 27, 28, 29, 36, and 37 of the
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`’284 Patent.
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`2. On March 29, 2012, HumanEyes filed a Complaint against Sony in the District
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`of Delaware also alleging that Sony infringed the ’284 Patent. See HumanEyes
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`Technologies Ltd. v. Sony Electronics Inc. et al., 1-12-CV-00398 (D. Del.).
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`3. On September 25, 2012, the ITC investigation was terminated, pursuant to an
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`unopposed motion filed by HumanEyes.
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`4. On March 29, 2013, Sony filed a petition for inter partes review requesting
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`cancellation of the claims of the ’284 patent that HumanEyes had asserted against
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`Sony in the ITC investigation. Sony Corp. v. HumanEyes Technologies Ltd., IPR2013-
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`00219 (P.T.A.B.) (“First Petition”).
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`1
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`5. On April 19, 2013, Sony filed a motion in the Delaware action for a stay
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`pending IPR2013-00219.
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`6. On May 6, 2013, in response to the stay motion, HumanEyes contended that
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`Sony was infringing additional claims of the ’284 Patent that were not asserted in the
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`ITC Complaint nor otherwise previously asserted against Sony, namely claims 4, 7,
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`and 38. See Answering Brief in Opposition to Sony’s Motion to Stay Pending the
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`Outcome of Inter Partes Review of the Patents-In-Suit, HumanEyes Technologies Ltd. v.
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`Sony Electronics Inc. et al., 1-12-CV-00398, D.I. 34, at 13-14 (D. Del. May 6, 2013)
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`(Sony-1102).
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`7. On June 27, 2013, the undersigned counsel for Sony notified David McCombs,
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`counsel for patent owner in IPR2013-00219, that Sony intended to file a petition for
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`inter partes review of claims 4, 7 and 38 of the ’284 Patent and to accompany the
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`petition with a request for joinder with IPR2013-00219 pursuant to 35 U.S.C. § 315(c)
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`and 37 C.F.R. § 42.122(b).
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`8. On July 2, 2013, the Board held a telephone conference with the parties to
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`IPR2013-00219, at Sony’s request, to discuss the present motion. On even date
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`herewith, the Board issued an Order (Paper 15) relating to the matters discussed in
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`the telephone conference.
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`9. On even date herewith, Sony filed a second petition for inter partes review of the
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`’284 Patent, IPR2013-00327 (“Second Petition”), requesting cancellation of the
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`additional asserted claims 4, 7 and 38.
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`2
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`10. Each of claims 4 and 7 of the ’284 patent is dependent on claim 3, which is
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`dependent on claim 1. Sony challenges the patentability of each of claims 1 and 3 in
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`the First Petition. Claim 38 is an independent claim.
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`11. In the Second Petition, Sony’s grounds for challenging the patentability of
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`claims 4 and 7 of the ’284 patent include one additional prior art reference (Allen) that
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`was not included the First Petition. Sony relies on Allen with respect to the
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`limitations that claims 4 and 7 add to claims 1 and 3.
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`12. Sony’s grounds for challenging the patentability of claim 38 in the Second
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`Petition are based on prior art references that are included in the First Petition.
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`III. Governing Rule(s)
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`§ 42.122 Multiple proceedings and Joinder.
`(b) Request for Joinder. Joinder may be requested by a patent owner or
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`petitioner. Any request for joinder must be filed, as a motion under § 42.22, no
`later than one month after the institution date of any inter partes review for
`which joinder is requested. The time period set forth in § 42.101(b) shall not
`apply when the petition is accompanied by a request for joinder.
`IV. Discussion
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`The Leahy-Smith America Invents Act (AIA) permits the Patent Trial and Appeal
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`Board (“the Board”) to join of inter partes review proceedings at its discretion. See
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`35 U.S.C. § 315(c). A motion for joinder must be filed no later than one month after
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`the institution date of any inter partes review for which joinder is requested. See
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`3
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`37 C.F.R. § 42.122(b). This joinder motion is timely as IPR2013-000219 has not yet
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`been instituted.
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`In its Order of July 3, 2013 (Paper 15), the Board stated that motion for joinder
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`should explain why joinder is appropriate, identify any new grounds of unpatentability
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`asserted in the additional petition, and explain what impact joinder would have on the
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`scheduling of events.
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`First, joinder is appropriate because Sony will be unduly prejudiced if joinder is
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`denied, since its Second Petition will be time barred. Sony filed its First Petition
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`within one year of the service of HumanEyes’ Complaint in the ITC, and Sony’s First
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`Petition challenged all claims that HumanEyes’ had asserted against Sony up to that
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`time. After Sony filed the First Petition and after the expiration of one year from
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`service of the ITC Complaint, HumanEyes asserted three additional claims in the ’284
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`Patent (claims 4, 7 and 38) against Sony. See Sony-1102, at 13-14. In order to
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`challenge the newly asserted claims in an inter partes review, the only option available
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`to Sony was to file the Second Petition and simultaneously request joinder pursuant to
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`37 C.F.R. § 42.122(b). The Board has stated that, absent joinder, a petition filed more
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`than one year after service of a complaint alleging infringement by the petitioner is
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`time barred. See IPR2013-00109, Paper No. 15, at 4 (P.T.A.B. Feb. 25, 2013) (“This is
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`an important consideration” because “absent joinder of this proceeding . . . the
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`second Petition would be barred.”). Therefore, according to the Board’s statement in
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`4
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`IPR2013-00109, absent joinder, Sony’s petition for inter partes review of the three
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`newly asserted claims of the ’284 patent will be barred.
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`Joinder is also appropriate because there will be no discernible prejudice to the
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`Patent Owner from joining the two proceedings. Sony filed its Second Petition and
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`the instant motion well before issuance of a decision regarding whether to institute
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`trial with respect to any of the grounds set forth in the First Petition, and within two
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`months of learning of the Patent Owner’s assertion that Sony is infringing the claims
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`to which the Second Petition is directed. If the First Petition is instituted, the Board
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`will issue a final determination within one year (or 18 months for good cause) of the
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`date of its institution. See 35 U.S.C. § 316(a)(11). Accordingly, the Patent Owner will
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`not be delayed in receiving a timely final written decision on the patentability of the
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`challenged claims of the ’284 Patent. Further, Sony will accommodate any reasonable
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`logistical or scheduling requests of Patent Owner in order to accommodate joinder of
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`the proceedings.
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`Second, the only new grounds of unpatentability in the Second Petition are
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`addressed solely to limitations included in claims 4 and 7 that do not appear in the
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`claims included in the First Petition. Six of the seven references cited in the Second
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`Petition were cited in the First Petition (namely, Kawakita, Chen, Ishiguro, Berger,
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`Asahi, and Helava). The one new reference in the Second Petition, Allen, replaces
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`Kodak cited in the First Petition. Kodak was cited with respect to the limitation of
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`claim 3, which adds a “communications apparatus” to the imaging apparatus of claim
`5
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`1. Claim 7 recites that the “communications apparatus” of claim 3 comprises
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`“apparatus for transmitting data over a wireless communication channel.” Although
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`Kodak discloses a “communications apparatus,” it does not disclose a wireless device.
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`Sony submits that Allen does disclose a wireless “communications apparatus,” and
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`cites Allen in the Second Petition for that reason. Although Allen and Kodak each
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`disclose the added limitation of claim 4, Sony cites only Allen in the Second Petition
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`to avoid duplication. With respect to the limitations of claims 4 and 7 that are
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`incorporated from claims 1 and 3, Sony relies on prior art and grounds of
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`unpatentability that are argued with respect to claims 1 and 3 in the First Petition.
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`Sony’s challenge to independent claim 38 in the Second Petition is based entirely
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`on references cited in the First Petition. In fact, independent claim 38 is similar in
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`many respects to claim 27, which was challenged in the First Petition, and accordingly,
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`the specific grounds of unpatentability in the Second Petition for claim 38 are similar
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`to those directed to claim 27 in the First Petition.1
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` Third, joinder will have no significant impact on the scheduling of events. The
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`decision regarding whether to institute inter partes review with respect to any of the
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`grounds set forth in the First Petition has not issued and is not due for almost three
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`1 Grounds D, E, F, G, H, I, and J in the Second Petition contain arguments similar
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`to those in grounds A, C, G, H, J, K, and L in the First Petition, respectively.
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`6
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`months, and, therefore, no schedule has been set with respect to the proceeding post-
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`institution. Because the Second Petition differs in only limited respects from the First
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`Petition (adding only one new reference), the Patent Owner should be in a position to
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`submit any preliminary response to the Second Petition in less than the three months
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`that are allotted by 37 C.F.R. § 42.107(b), i.e., well before early October 2013. The
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`one year deadline to complete inter partes review (or 18 months for good cause) on the
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`First Petition would not be triggered until September 30, 2013, provided that the
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`Board does not issue an earlier decision. Therefore, any effect on the post-institution
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`schedule that the Board might otherwise adopt in the absence of the Second Petition
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`should be minimal.
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`V. Conclusion
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` For the forgoing reasons, Sony respectfully requests that the Board join the instant
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`proceeding with IPR2013-00219.
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`Dated: July 3, 2013
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`_/s/ Walter Hanley__
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`Walter Hanley, Lead Counsel, Reg. No 28,720
`whanley@kenyon.com
`Michelle Carniaux, Backup Counsel, Reg. No. 36,098
`mcarniaux@kenyon.com
`KENYON & KENYON LLP
`One Broadway, New York, NY 10004-1007
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`7
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`Certificate of Service Under 37 C.F.R. § 42.6(e)(4)
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`I certify that I caused a true and correct copy of the forgoing to be served via
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`EXPRESS MAIL® on the following:
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`Jay Finkelstein
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`William Nelson and Robert Gerrity
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`Browdy and Neimark, PLLC
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`Tensegrity Law Group LLP
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`1625 K Street, N.W., Suite 1100
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`555 Twin Dolphin Dr., Suite 360
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`Washington DC, 20006
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`Redwood Shores, CA 94065
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`David McCombs and David O’Dell
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`Haynes and Boone, LLP
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`2323 Victory Avenue, Suite 700
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`Dallas, Texas 75219
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`Dated: __July 3, 2013__
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`_/s/ Michael E. Sander_
`Michael E. Sander
`msander@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
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