Paper No. __
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`Filed on behalf of Petitioners
`By: Randy J. Pritzker
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`
`Michael N. Rader
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`Robert M. Abrahamsen
`
`Andrew J. Tibbetts
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`WOLF, GREENFIELD & SACKS, P.C.
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`600 Atlantic Avenue
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`Boston, MA 02210
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`Tel: (617) 646-8000
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`Fax: (617) 646-8646
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`RPritzker-PTAB@wolfgreenfield.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.,
`Petitioners,
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner.
`_____________
`
`Case No. IPR2017-00595
`Patent No. 6,928,433
`_____________
`
`PETITIONERS’ MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
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`
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`Filed on behalf of Petitioners
`By: Randy J. Pritzker
`
`
`Michael N. Rader
`
`Robert M. Abrahamsen
`
`Andrew J. Tibbetts
`
`WOLF, GREENFIELD & SACKS, P.C.
`
`600 Atlantic Avenue
`
`Boston, MA 02210
`
`Tel: (617) 646-8000
`
`Fax: (617) 646-8646
`
`RPritzker-PTAB@wolfgreenfield.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.,
`Petitioners,
`
`v.
`
`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner.
`_____________
`
`Case No. IPR2017-00595
`Patent No. 6,928,433
`_____________
`
`PETITIONERS’ MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
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`
`
`
`
`
`
`
`
`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
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`
`I.
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`RELIEF REQUESTED
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`Sony Corporation, Sony Mobile Communications (USA) Inc. (“SoMC-
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`USA”), Sony Mobile Communications AB, and Sony Mobile Communications
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`Inc. (“SoMC”) (collectively, “Petitioners”) have filed two petitions for inter partes
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`review (IPR) of U.S. Patent No. 6,928,433 (“the ’433 patent”). The first petition
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`led to institution of an IPR trial designated as IPR2016-01407 (“First IPR”). A
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`second petition for IPR of the ’433 patent is being filed on the same date as this
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`motion (“Second Requested IPR”). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
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`§ 42.122(b), Petitioners respectfully move for joinder of any proceeding resulting
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`from the Second Requested IPR with the First IPR.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On July 11, 2016, Petitioners filed a petition for inter partes review of
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`the ’433 patent that presented the following grounds:
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`Ground Number and Reference(s)
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`Claims
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`Basis
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`1 Looney
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`2 Looney and Proehl
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`3 Looney, Proehl, and Johnson
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`4 Birrell and Seidensticker
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`2, 3, 5, 7, 17 and 18
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`2, 3 and 19-28
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`23, 24, 27 and 28
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`2, 3, 5, 7, 17 and 18
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`5 Birrell, Seidensticker, and Proehl
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`19-28
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`
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`6 Birrell, Seidensticker, Proehl, and Johnson
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`23, 24, 27 and 28
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`7 Birrell, Seidensticker, and Looney
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`17, 18
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`102
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`103
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`103
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`103
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`103
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`103
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`103
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`8 Birrell, Seidensticker, Proehl, and Looney
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`20, 22, 24, 26 and 28 103
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`9 Birrell, Seidensticker, Proehl, Johnson, Looney
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`24 and 28
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`103
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`- 1 -
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`
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`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
`
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`On October 19, 2016, Patent Owner filed its preliminary response in the First IPR.
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`On December 6, 2016, the Board issued an institution decision and scheduling
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`order in the First IPR, instituting trial on all challenged claims of the ’433 patent
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`under Grounds 4-9, based on the Birrell, Seidensticker, Proehl, Johnson, and
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`Looney prior art references. The Board, however, declined to institute an IPR trial
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`on Grounds 1-3, all of which relied upon Looney (U.S. Patent No. 5,969,283) as
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`the primary prior art reference. The Board’s decision not to institute an IPR trial
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`on Grounds 1-3 was based on its conclusion that Looney did not satisfy the claim
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`term “portable media player” under the Board’s construction of that term.
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`2.
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`On January 6, 2017 (concurrently with this motion), Petitioners are
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`filing a second petition for IPR of the ’433 patent, challenging claims 2, 3, 5, 7, 17
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`and 18 under § 102 and claims 2, 3 and 19-28 of the ’433 patent under § 103.
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`3.
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`The second IPR petition sets forth grounds based upon Looney, but
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`relies upon a different embodiment of Looney, not cited in the first petition, that
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`constitutes a “portable media player” under the Board’s construction. In the
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`second IPR petition, Petitioners explain why the Board should institute a second
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`IPR based on the grounds set forth in Petitioner’s second IPR petition.
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`4.
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`All three of the prior art references relied upon in Petitioners’ second
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`IPR petition (i.e., Looney, Proehl, and Johnson) are already at issue in grounds that
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`the Board instituted in the First IPR.
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`- 2 -
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`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
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`III. DISCUSSION
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`The requested joinder will serve to secure the just, speedy, and inexpensive
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`resolution of these proceedings. Under 35 U.S.C. § 315(c):
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`If the Director institutes an inter partes review, the Director, in his or
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`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
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`Director, after receiving a preliminary response under section 313 or
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`the expiration of the time for filing such a response, determines
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`warrants the institution of an inter partes review under section 314.
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`In addition, 37 C.F.R. § 42.122(b) provides that “[j]oinder may be requested
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`by a patent owner or petitioner. Any request for joinder must be filed, as a motion
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`under § 42.22, no later than one month after the institution date of any inter partes
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`review for which joinder is requested.”
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`This motion is timely under § 42.122(b) because Petitioner’s First IPR was
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`instituted on December 6, 2016, one month before the filing of this motion.
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`Moreover, the First IPR (IPR2016-01407) is currently pending.
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`Patent Owner served Petitioners with a complaint in the related district court
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`action on March 25, 2016, considerably less than one year before the filing of the
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`second IPR petition. Petitioners are not using joinder as a means to circumvent the
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`§ 315(b) bar. See Oxford Nanopore Tech. Ltd. v. Univ. Wash. & UAB Research
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`Found., IPR2015-00057, Paper 10 at 24 (Apr. 27, 2015).
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`- 3 -
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`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
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`The Board has explained that a motion for joinder should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule of the existing proceeding; and (4) address specifically how briefing
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`and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC,
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`IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013). In the present case, all of these
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`factors favor granting the requested joinder.
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`A.
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`Joinder Is Appropriate for Reasons of Efficiency and Fairness
`Because Both Proceedings Involve the Same Parties, the Same
`Claims of the Same Patent, and Grounds of Unpatentability Based
`on the Same Prior Art References.
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`Joinder is particularly appropriate in this case because of the efficiencies that
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`will be gained thereby: the second IPR petition addresses the same claims as the
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`First IPR, is based on the same prior art references that are already at issue in the
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`First IPR, and involves the same parties as the First IPR.
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`All of the references relied upon in the second IPR petition (i.e., Looney,
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`Proehl, and Johnson) are already at issue in grounds that the Board instituted in the
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`First IPR. With respect to Proehl and Johnson, the second IPR petition cites the
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`same passages, for the same reasons, as in the First IPR. With respect to Looney,
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`many of the same disclosures are cited, with the exception of an additional
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`embodiment, as noted above and explained in the second IPR petition.
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`- 4 -
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`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
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`Thus, as to both claim construction and application of the prior art, the two
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`proceedings involve common and almost completely overlapping issues. Joinder
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`therefore will not impose any hardship or prejudice on either party. Granting
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`joinder will lead to a just, speedy, and inexpensive resolution of both proceedings.
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`The Board has consistently held that 35 U.S.C. § 315(c) authorizes joinder
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`of two proceedings involving the same parties. Zhongshan Broad Ocean Motor
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`Co., Ltd. v. Nidec Motor Corp., IPR2015-00762, Paper 16 at 5 (Oct. 5, 2015) (on
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`rehearing, reversing earlier denial of institution as an abuse of discretion: “for
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`reasons explained by several majority opinions in prior decisions of the Board, we
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`conclude that § 315(c) permits the joinder of any person who properly files a
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`petition under § 311, including a petitioner who is already a party to the earlier
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`instituted inter partes review.”). Indeed, the Patent Office itself has taken this
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`position in briefing before the Federal Circuit. Id. at 4.
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`In Target Corp. v. Destination Maternity Corp., IPR2014-00508, similar to
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`Zhongshan, the Board initially denied joinder of two IPRs resulting from petitions
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`filed by the same petitioner. Target, IPR2014-00508, Paper 18 (Sept. 25, 2014).
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`Upon rehearing, an expanded panel found that the prior decision denying joinder
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`was based on an erroneously narrow interpretation of § 315(c) and thus an abuse of
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`discretion. Id., Paper 28 at 17 (Feb. 12, 2015).
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`- 5 -
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`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
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`Target concluded that the language of § 315 (“the Director, in his or her
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`discretion, may join as a party to that inter partes review any person who
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`properly files a petition under § 311”), when read in light of § 311 (which
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`specifies that “a person who is not the owner of a patent may file with the Office
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`a petition to institute an inter parte review of the patent”), means that joinder of
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`the same party that filed an earlier petition is proper. Id. at 7.
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`Both since Target, and also before Target, the Board has consistently come
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`to the same conclusion. Zhongshan, IPR2015-00762, Paper 16 at 5; Oxford
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`Nanopore, IPR2015-00057, Paper 10 at 23; Samsung Elec. Co., Ltd. v. Va.
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`Innovation Sci., Inc., IPR2014-00557, Paper 10 at 16 (June 13, 2014); Ariosa
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`Diagnostics v. Isis Innovation Ltd., IPR2013-00250, Paper 24 at 4 (Sept. 3, 2013).
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`The Board should grant Petitioners’ joinder motion in this case for the same
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`reasons.
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`B. Given Its Early Stage, Joinder Will Not Materially Impact the
`Trial Schedule of the Existing Proceeding, and Joinder Would Not
`Prejudice Either Party.
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`The First IPR was instituted a month ago, on December 6, 2016. A decision
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`on this motion will come before the First IPR will have progressed significantly
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`and well in advance of the currently-scheduled date for the oral hearing. Any
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`adjustments to the trial schedule resulting from joinder would therefore be modest.
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`- 6 -
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`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
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`Moreover, to avoid any prejudice with respect to scheduling, Petitioners
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`consent to the existing trial schedule in the First IPR for the joined proceedings,
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`and also consent to a reasonable adjustment of the trial schedule for the First IPR
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`(e.g., to match the schedule of the second IPR) if requested by Patent Owner. If an
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`adjustment is made to the First IPR’s trial schedule for a joined proceeding, to
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`minimize the necessary adjustment, Petitioners further consent to a reasonable
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`shortening of the period for preparing Petitioners’ reply following Patent Owner’s
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`response to the institution of any ground set forth in the second IPR petition.
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`Given that all of the prior art references relied upon in the second IPR
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`petition are already at issue in the First IPR, with substantially the same disclosures
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`from Looney and the same disclosures from Proehl and Johnson cited in both
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`proceedings, Patent Owner will not be subjected to an additional burden.
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`C.
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`Joinder Will Simplify Discovery and Briefing; Only a Single
`Expert Deposition and a Single Oral Hearing Will Be Required.
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` Both of Petitioners’ IPR petitions rely on testimony from the same expert,
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`Dr. Benjamin B. Bederson. Patent Owner is likewise expected to rely on the same
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`expert, Mr. Eric Bear, who Patent Owner disclosed in the ITC investigation and
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`relied upon in its Preliminary Response for the First IPR. Joining the two IPR
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`trials will allow for common discovery with regard to Dr. Bederson, and likely for
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`Mr. Bear (e.g., a common date for deposition).
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`- 7 -
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`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
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`Moreover, given that the First IPR and the second IPR petition rely upon
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`overlapping prior art and overlapping disclosures from that prior art, any other
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`discovery sought is likely to overlap between the proceedings. Joinder would
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`allow for efficiencies in such potential discovery.
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`Joinder would also permit the proceedings to be adjudicated with a single
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`oral hearing. Again, given the overlapping claims and prior art, the topics that may
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`arise in oral hearings between the two proceedings are likely to overlap as well.
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`Holding a single oral hearing will serve to secure the just, speedy, and inexpensive
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`resolution of both proceedings.
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioners respectfully request that the Board
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`grant joinder of any proceeding resulting from institution of the Second Requested
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`IPR with the First IPR (i.e., IPR2016-01407).
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`
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`Dated: January 6, 2017
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`
`
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`Respectfully submitted,
`Sony Corporation et al.
`
`/Randy J. Pritzker/
`
`
`By
`Randy J. Pritzker, Reg. No. 35,986
`Michael N. Rader, Reg. No. 52,146
`Robert M. Abrahamsen, Reg. No. 40,886
`Andrew J. Tibbetts, Reg. No. 65,139
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
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`
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`- 8 -
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`
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`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
`
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`Boston, MA 02210-2206
`Tel: 617-646-8000/Fax: 617-646-8646
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`- 9 -
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`Case No. IPR2017-00595
`IPR for U.S. Patent No. 6,928,433
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`I certify that on January 6, 2017, I will cause a copy of the foregoing
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`
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`document, including any exhibits or appendices referred to therein, to be served via
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`Overnight FedEx upon the attorney of record for the patent at the following
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`address:
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`
`
`OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
`1940 DUKE STREET
`ALEXANDRIA VA 22314
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`
`
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`
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`Date: January 6, 2017
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`/MacAulay S. Rush /
`MacAulay S. Rush
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`- 10 -
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