Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`SONY CORPORATION
`Petitioner
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`v.
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`Patent of YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`___________________
`
`Case IPR2013-00327
`Patent 7,477,284
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`_____________________
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`PATENT OWNER’S OPPOSITION TO JOINDER
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`Patent of YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`___________________
`
`Case IPR2013-00327
`Patent 7,477,284
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`_____________________
`
`
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`PATENT OWNER’S OPPOSITION TO JOINDER
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ............................................................................................. 4
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`II. STATEMENT OF MATERIAL FACTS .......................................................... 4
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`III. ARGUMENT .................................................................................................... 6
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`A. Legal Standard ............................................................................................... 6
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`B. Sony Did Not Act Diligently ......................................................................... 6
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`C. Yissum Will Be Prejudiced if Joinder is Granted ......................................... 9
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`D. Sony Will Not Be Prejudiced If Joinder is Denied .....................................11
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`IV. CONCLUSION ..............................................................................................11
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`Exhibit List ...............................................................................................................13
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`Certificate of Service ...............................................................................................14
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`TABLE OF AUTHORITIES
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`FEDERAL STATUTES
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`35 U.S.C. § 315(b), as amended ………..…………….………..…..………………6
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`35 U.S.C. § 315(c) ……….…………………...……………………………………5
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`35 U.S.C. § 314(a) ………………………………………………..………………..6
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`REGULATIONS
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`37 C.F.R. § 42.5(c)…………………………………………………………………8
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`37 C.F.R. § 42.101(b)………….…………………………………….……………..6
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`37 C.F.R. § 42.107(b)………………………………………………………………8
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`37 C.F.R. § 42.122(b).………………………………..……….………….………...6
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`OTHER AUTHORITIES
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758
` (Aug. 14, 2012)….….…………………………………………..……………….....6
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`“A Guide to the Legislative History of the America Invents Act: Part II of II,” The
`Federal Circuit Bar Journal, Vol. 21, No. 4, pages 539, 612-614 (2012), citing 157
`Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)………………7
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`I.
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`INTRODUCTION
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`Patent Owner Yissum Research Development Company of the Hebrew
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`University of Jerusalem (“Yissum”) respectfully opposes Sony Corporation’s
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`(“Sony’s) Motion for Joinder of its petition for inter partes review of claims 4, 7,
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`and 38 of U.S. Patent No. 7,477,284 (the “Second Petition”) with the pending inter
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`partes review, IPR2013-00219. Yissum opposes joinder because of Sony’s lack of
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`diligence in pursuing the Second Petition, which is now being sought some 16
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`months after Sony was served with two complaints alleging infringement. Within
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`the one year time bar allotted by Congress for filing its first petition, Sony chose to
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`challenge only a few claims, when it could have challenged substantially more, and
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`even now its Second Petition does not address all of the claims in dispute between
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`the parties. Sony’s piecemeal approach and delayed filing under the present facts
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`is counter to the policies behind inter partes review of a just, speedy and
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`inexpensive resolution of proceedings, and unduly prejudices Yissum.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1. On March 29, 2012, Yissum’s real party in interest HumanEyes
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`Technology Ltd. (“HumanEyes”) filed suit against Sony Corporation, Sony
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`Corporation of America, Sony Electronics Inc., Sony Mobile Communications
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`(USA) Inc., and Sony Mobile Communications AB (individually and collectively,
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`“Sony”) in the U.S. District Court for the District of Delaware, HumanEyes Techs.,
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`LTD. v Sony Elecs, Inc., Sony Corp., Sony Corp. of America, Sony Mobile Comms,
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`AB, Sony Mobile Comms. (USA), Inc., Case No. 1:12-cv-00398-GMS, alleging
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`infringement of U.S. Patent Nos. 6,665,003 and 7,744,284 (“District Court
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`Litigation” or “Litigation”). See, Declaration of Robert L.Gerrity In Support of
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`Opposition To Joinder (“Gerrity Decl.”) at ¶ 3 (Exhibit YRD-2001).
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`2. On March 29, 2013, Sony filed petitions for inter partes review of
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`U.S. Patent Nos. 6,665,003 (IPR2013-00218) and 7,477,284 (IPR2013-00219)
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`challenging 14 of the 155 claims of the patents.
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`3.
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`On April 19, 2013, Sony filed a Motion to Stay Litigation Pending
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`Outcome of Inter Partes Review of the Patents-In-Suit (“Sony’s Motion to Stay”).
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`Gerrity Decl. ¶ 4 (Exhibit YRD-2001).
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`4.
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`On May 6, 2013, HumanEyes filed its Answering Brief in Opposition
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`to Sony’s Motion to Stay (“HumanEyes Answering Brief”). Exhibit Sony-1102.
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`The court has not ruled on Sony’ Motion to Stay. Gerrity Decl. ¶¶ 5, 8 (Exhibit
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`YRD-2001).
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`5.
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` On July 3, 2013, Sony filed second petitions for inter partes review of
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`U.S. Patent Nos. 6,665,003 (IPR2013-00326) and 7,477,284 (IPR2013-00327)
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`challenging an additional 6 of the 155 claims of the patents.
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`III. ARGUMENT
`A. Legal Standard
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
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`review proceedings under 35 U.S.C. § 315(c), which reads as follows:
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`(c) JOINDER. –If the Director institutes an inter partes review, the Director,
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`in his or her discretion, may join as a party to that inter partes review any
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`person who properly files a petition under section 311 that the Director, after
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`receiving a preliminary response under section 313 or the expiration of the
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`time for filing such a response, determines warrants the institution of an inter
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`partes review under section 314.
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`Normally, a petition for inter partes review filed more than one year after the
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`service of a complaint alleging infringement of the patent is barred. 35 U.S.C. §
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`315(b), as amended; 37 C.F.R. § 42.101(b). The one-year time bar, however, does
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`not apply to a request for joinder. 35 U.S.C. § 315(b) (final sentence); 37 C.F.R. §
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`42.122(b). Yet, the statute makes clear that joinder is entirely discretionary with
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`the Director. 35 U.S.C. § 315(c). Absent discretionary joinder of this proceeding
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`with IPR2013-00218, the Second Petition in this case would be barred.
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`B.
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`Sony Did Not Act Diligently
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`Joinder should be denied because Sony did not act diligently. The statute
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`encourages early filings bounded by a one year time bar when litigation is involved
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`so that Patent Office proceedings do not become a moving target. Sony had ample
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`opportunity to seek review of the claims identified in the Second Petition within
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`the one year period of section 315(b), but chose not to do so. Because nothing has
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`changed in the litigations between the parties since that time, Patent Office policy
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`dictates against authorizing joinder under these circumstances. “The rules are to be
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`construed so as to ensure a just, speedy, and inexpensive resolution of a proceeding
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`. . . .” Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (Aug. 14,
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`2012). The filing of multiple petitions spread over a 16 month period as a tactic to
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`potentially stay or otherwise delay the co-pending litigation is not conducive to
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`Patent Office policy and allowing Sony to do so will only incentivize the same
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`behavior from future petitioners. The present situation is not one in which
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`circumstances have changed since the inception of the Litigation that would
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`indicate the need for additional petitions being filed. All 155 claims of U.S. Patent
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`Nos. 6,665,003 and 7,477,284 remain pending in the litigation; there has been no
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`claim construction order; and there have been no rulings that otherwise limit the
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`number or scope of claims that may be asserted as infringed. Gerrity Decl. ¶ 10
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`(Exhibit YRD-2001). Although the HumanEyes’ Answering Brief in connection
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`with Sony’s motion to stay the litigation mentions additional claims as examples
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`that could apply to Sony, the litigation has not been limited to those or any other
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`particular claims.
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`–7–
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`Referring to the legislative history, Senator Kyl commented on the time limit
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`for allowing joinder and pointed out that USPTO discretion should be exercised in
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`a manner that encourages early filings, not late ones. See, “A Guide to the
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`Legislative History of the America Invents Act: Part II of II,” The Federal Circuit
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`Bar Journal, Vol. 21, No. 4, pages 539, 612-614 (2012), citing 157 Cong. Rec.
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`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). Specifically, Senator Kyl
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`noted that “[t]he Office has made clear that it intends to use this authority to
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`encourage early requests for joinder and to discourage late requests.” Id. Late
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`petitioning without any special circumstances, as is the case here, should be
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`discouraged by denying Sony’s motion. Allowing joinder here invites additional,
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`subsequent requests for joinder three months, six months, or nine months from
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`now, whenever Sony unilaterally decides it wants to challenge additional claims
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`before the Office. Under these circumstances Sony would have no incentive to
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`exercise its burden to reasonably investigate which claims it would like to
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`challenge within the one year period—nor would any other future petitioner for
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`inter partes review. The broader consideration for the Board is the likely
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`encouragement of multiple, segmented petition filings after the one year time bar
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`as a matter of routine practice.
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`C. Yissum Will Be Prejudiced if Joinder is Granted
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`If the Board grants Sony’s motion and expedites the three month due date
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`for filing a patent owner preliminary response on the issues raised in the additional
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`petitions, Yissum may be prejudiced to the extent it is not given a full and fair
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`opportunity to respond. 37 C.F.R. § 42.107(b); 37 C.F.R. § 42.5(c).
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`More importantly, Yissum will be prejudiced if joinder influences the
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`district court to grant Sony’s pending motion to stay litigation pending outcome of
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`inter partes review of the patents-in-suit. In its answering brief opposing Sony’s
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`motion to stay litigation, Yissum’ s real party in interest HumanEyes articulates
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`factors that weigh heavily against a litigation stay. Gerrity Decl. ¶ 7 (Exhibit
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`YRD-2001) and Exhibit Sony-1102. Among them is that Sony’s petitions for inter
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`partes review will not resolve all issues because the petitions only address 14 of the
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`155 claims at issue in the litigation. Id. Sony’s Second Petition adds just 3
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`additional claims and thus also will not resolve all issues. Accordingly, stay
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`should be denied. Nonetheless, Sony’s joinder motion appears to be a last ditch
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`effort to exert influence on the District Court in favor of stay—as well as an effort
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`to join claims to this proceeding at a time of its choosing rather than according to
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`the time-table set by Congress. Sony should not now be rewarded by the Office
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`through the grant of a discretionary joinder that could serve to deny Yissum’ s real
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`party-in-interest, HumanEyes, access to the District Court. The joinder motion is
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`yet another among repeated efforts undertaken by Sony to delay the resolution of
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`its dispute with Yissum.
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`Any delay to these proceedings caused by this (or any future attempts at
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`joinder)—especially any stay of the District Court proceeding—would be
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`prejudicial to Yissum’s real party-in-interest, HumanEyes. See, Declaration of
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`Vered Levy-Ron, Chief Executive Officer of HumanEyes. (Exhibit YRD-2002).
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`HumanEyes is a 15-employee small business that has been striving to defend its
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`intellectual property rights against Sony’s infringement for more than a year, at
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`great expense relative to its available resources as compared with Sony, a global
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`conglomerate. Levy-Ron Decl. ¶¶ 10, 11 (Exhibit YRD-2002). Delay in resolving
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`Sony’s ongoing infringement and use of HumanEyes’ patented technology
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`continues to harm HumanEyes’ business. Levy-Ron Decl. ¶ 9 (Exhibit YRD-
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`2002). For example, the continued perceived uncertainty in the market regarding
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`the strength and value of HumanEyes’
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`intellectual property
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`is harming
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`HumanEyes’ ability to find licensing partners as well as HumanEyes’ ability to
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`raise capital. Id. The greater the delay in resolving the dispute regarding Sony’s
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`infringement, the greater this uncertainty becomes. Id. These considerations, as
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`well as the future incentive effects for Sony and other petitioners, should be taken
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`into account as part of the discretionary evaluation performed by the Board, and
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`weigh against granting Sony’s motion.
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`D.
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`Sony Will Not Be Prejudiced If Joinder is Denied
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`Joinder will not resolve the issues of infringement and validity pending
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`before the district court concerning the more than 100 claims of the patents at issue
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`that are not part of any of Sony’s four pending petitions. Prior to expiration of the
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`one-year time bar, Sony was not precluded from conducting its own reasonable
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`evaluation of the patents and filing petitions for inter partes review directed to all
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`of the claims it believed to be invalid. Sony made a conscious choice to petition
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`only a handful of claims based, by Sony’s own admission, on a terminated
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`previous ITC investigation involving the parties, rather than based on Sony’s own
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`reasonable investigation of the claims for which it was put on notice in the March
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`29, 2012 Delaware District Court Complaint. Denial of joinder with respect to the
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`few additional claims Sony seeks to challenge now through its Second Petition will
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`not materially change Sony’s posture in the litigation because this new round of
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`piecemeal petitions still fail to address all of the claims potentially at issue in that
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`litigation. Sony will not be prejudiced if the Second Petition is not joined in the
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`pending proceeding.
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`IV. CONCLUSION
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`For all of the foregoing reasons, the Board should deny Sony’s motion for
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`joinder of the Second Petition with IPR2013-00219.
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`Respectfully submitted,
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`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
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`HAYNES AND BOONE, LLP
`Customer No. 27683
`Telephone: 214/651-5533
`Facsimile: 972/692-9116
`Attorney Docket No.: 50519.4
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`Dated: July 12, 2013
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`R-338439_1
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`EXHIBIT LIST
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`IPR2013-00327
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`Sony Corp.
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`v.
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`Yissum Research Development Company of the Hebrew University of Jerusalem
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`Yissum Research Development Company’s Exhibit List
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`
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`July 12, 2013
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`YRD-2001
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`Declaration of Robert Gerrity In Support of Opposition To
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`Joinder
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`YRD-2002
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`Declaration of Vered Levy-Ron
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` Patent Owner’s Opposition To Joinder
`IPR2013-00327 (Patent 7,477,284)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`SONY CORPORATION
`Petitioner
`v.
`Patent of YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`___________________
`Case IPR2013-00327
`Patent 7,477,284
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`_____________________
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
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`service was made on the Petitioner as detailed below.
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`Date of service July 12, 2013
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`Manner of service Electronic Mail (Sony-HumanEyes@kenyon.com)
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`Documents served Patent Owner’s Opposition To Joinder, including Yissum’s
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`Exhibit List; and Exhibits: YRD-2001; YRD-2002
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`Persons served Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
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`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
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`–14–
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