Patent No. 6,928,433
`IPR2017-00595
`
`
`
`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
`
`U.S. Patent No. 6,928,433
`
`
`
`Case No. IPR2017-00595
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`PURSUANT TO 37 C.F.R. § 42.23
`
`
`
`
`IPR2017-00595
`
`
`
`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
`
`U.S. Patent No. 6,928,433
`
`
`
`Case No. IPR2017-00595
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`PURSUANT TO 37 C.F.R. § 42.23
`
`
`
`
`
`Patent No. 6,928,433
`IPR2017-00595
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. LEGAL STANDARD ..................................................................................... 2
`
`III. ARGUMENT ................................................................................................... 3
`
`A. Petitioners Have Failed to Make a Prima Facie Showing that Joinder
`is Appropriate .......................................................................................... 3
`
`B.
`
`C.
`
`Joinder is Inappropriate Because the Schedules of the Two
`Proceedings are Incompatible and Joinder Would Excessively Delay
`the First Proceeding ................................................................................. 5
`
`Joinder is Inappropriate Because the Proceedings Involve Different
`Primary References and Different Issues ................................................ 7
`
`D. The Statutory and Regulatory Provisions for Joinder Only Provide
`for “Join[ing] as a Party,” Not Joinder of New Issues by an Existing
`Party ......................................................................................................... 8
`
`E. Denying Joinder Would Not Prejudice Petitioners Because this
`Second Petition Was Filed Prior to Expiration of the One-Year
`Statutory Bar ............................................................................................ 9
`
`IV. CONCLUSION .............................................................................................. 10
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Patent No. 6,928,433
`IPR2017-00595
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`
` Page(s)
`
`Cases
`Kyocera Corp. v. Softview LLC,
`IPR2013-00004, slip op. (PTAB Apr. 24, 2013) (Paper No. 15) ......................... 3
`
`Micro Motion, Inc. v. Invensys Systems, Inc.,
`IPR2014-01409, slip op. (P.T.A.B. Feb. 18, 2015) (Paper No. 14) ..................... 1
`
`Roche Molecular Systems Inc. v. Illumina, Inc.,
`IPR2015-01091, slip op. (PTAB Oct. 30, 2015) (Paper No. 18) ..................... 3, 5
`
`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, slip op. (PTAB Feb. 12, 2015) (Paper No. 28) ................... 9, 10
`
`Unified Patents, Inc. v. Personalweb Techs., LLC,
`IPR2014-00702, slip op. (PTAB Jan. 13, 2015) (Paper No. 12) .......................... 3
`
`Statutes
`
`35 U.S.C. § 315(b) ................................................................................................... 10
`
`35 U.S.C. § 315(c) ................................................................................................. 2, 8
`
`35 U.S.C. § 316(a)(11) ............................................................................................... 6
`
`Other Authorities
`
`37 C.F.R. § 42.1 ......................................................................................................... 6
`
`37 C.F.R. § 42.20(c) ................................................................................................... 3
`
`Frequently Asked Question (“FAQ”) H5, Patent Trial and Appeal
`Board, available at http://www.uspto.gov/ip/boards/bpai/prps.jsp ...................... 3
`
`Standard Operating Procedure 2 rev. 9, Patent Trial and Appeal
`Board, available at https://www.uspto.gov/sites/default/files/
`documents/sop2-revision-9-dated-9-22-2014.pdf ................................................ 9
`
`
`
`ii
`
`
`
`I. INTRODUCTION
`In this petition for inter partes review (the “Second IPR”), the Petitioners
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`Patent No. 6,928,433
`IPR2017-00595
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`seek a second bite at the apple by re-arguing the same invalidity grounds for which
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`this Board previously denied institution in IPR2016-01407 (the “First IPR”). Not
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`only do the Petitioners seek to reargue the same grounds that were previously
`
`denied institution, but they also seek to join this Second IPR with the First IPR. In
`
`its preliminary patent owner response, Patent Owner intends to set forth the
`
`reasons why no trial should be instituted in this Second IPR. In the present brief,
`
`Patent Owner explains why, even if the Board were to institute a second trial, the
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`Board should nonetheless deny the motion to join the two proceedings. In
`
`particular, the Board should deny Petitioners’ motion to join the First IPR and
`
`Second IPR because: (i) Petitioners have failed to make a prima facie showing that
`
`joinder is appropriate; (ii) the schedules are incompatible and joinder would cause
`
`unnecessary delay of the First IPR; (iii) the petitions involve different art and
`
`different arguments; (iv) the statutory requirements for joinder are not met because
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`no new party is being joined; and (v) denying joinder would not prejudice
`
`Petitioners because this second petition is not time-barred.1
`
`
`1 The Board can also deny joinder under 35 U.S.C. § 315(c) on the grounds that
`
`this petition constitutes an improper second bite at the apple. See Micro Motion,
`
`
`
`1
`
`
`
`For these reasons, as expressed more fully below, the Petitioners have failed
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`Patent No. 6,928,433
`IPR2017-00595
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`to demonstrate that joinder is appropriate. Accordingly, the Board should deny the
`
`motion for joinder.
`
`II. LEGAL STANDARD
`Section 315(c) of Title 35 of the U.S. Code provides that:
`
`“If the Director institutes an inter partes review, the Director, in his or
`her discretion, may join as a party to that inter partes review any
`person who properly files a petition under section 311 that the
`Director, after receiving a preliminary response under section 313 or
`the expiration of the time for filing such a response, determines
`warrants the institution of an inter parties review under section 314.
`
`Thus, joinder is discretionary based on the particular circumstances of each
`
`proceeding. See Unified Patents, Inc. v. Personalweb Techs., LLC, IPR2014-
`
`00702, slip op. at 4 (PTAB Jan. 13, 2015) (Paper No. 12). The party seeking
`
`joinder bears the burden of proving that it is entitled to the requested relief. 37
`
`C.F.R. § 42.20(c); Roche Molecular Systems Inc. v. Illumina, Inc., IPR2015-01091,
`
`slip op. at 7 (PTAB Oct. 30, 2015) (Paper No. 18). Under this Board’s practice, a
`
`motion for joinder must: (1) set forth the reasons joinder is appropriate; (2) identify
`
`
`Inc. v. Invensys Systems, Inc., IPR2014-01409, slip op. at 14 (PTAB Feb. 18, 2015)
`
`(Paper No. 14).
`
`
`
`2
`
`
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`any new grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing review.
`
`See Kyocera Corp. v. Softview LLC, IPR2013-00004, slip op. at 4 (PTAB Apr. 24,
`
`2013) (Paper No. 15); Frequently Asked Question (“FAQ”) H5, Patent Trial and
`
`Appeal Board, available at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`A.
`
`III. ARGUMENT
`Petitioners Have Failed to Make a Prima Facie Showing that Joinder is
`Appropriate
`
`As noted above, this Board’s rules require that the Petitioners, as movants,
`
`bear the burden of demonstrating that joinder is appropriate. Petitioners cursorily
`
`argue that joinder would create “efficiencies.” Mot. at 4. However, Petitioners
`
`provide little explanation for how or why joinder would be more efficient than
`
`allowing these two cases to proceed separately.
`
`Indeed, to the contrary, Petitioners’ argument simply identifies some of the
`
`overlap between this Second IPR and the First IPR. However, these observations
`
`are cursory and superficial. For example, Sony states that the Second IPR
`
`“involves the same parties as the First IPR.” However, it is no surprise that the
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`Patent Owner is a party in both proceedings—the same is true for every motion for
`
`joinder. Petitioners also argue that the claim construction will “involve common
`
`
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`3
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`
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`and almost completely overlapping issues,” but that is also true for virtually any
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`motion for joinder.
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`Petitioners also argue that the references are the same in both proceedings,
`
`but Petitioners conveniently omit that the primary references are completely
`
`different in the two proceedings. Thus, although the Looney reference may be
`
`involved in the First IPR, it is only involved to the extent that Petitioners have
`
`asserted it satisfies the “playlist is an active queue list of songs that is currently
`
`being played” limitation recited in a subset of the claims. IPR2016-01407,
`
`Institution Decision, Paper No. 13 at 22. By contrast, in the Second IPR, Looney
`
`is asserted as an anticipatory reference for six claims and as the primary reference
`
`for obviousness grounds for the remaining claims. Pet. at 17.
`
`Petitioners also argue in a conclusory manner that “[j]oinder therefore will
`
`not impose any hardship or prejudice on either party.” Mot. at 5. However,
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`Petitioners fail to provide any evidence or argument in support of that assertion.
`
`To the contrary, where, as here, the grounds are not identical between the two
`
`proceedings, this Board has regularly found that joinder would impose a burden on
`
`both the Patent Owner and on the Board. See, e.g., Roche Molecular Systems Inc.
`
`v. Illumina, Inc., IPR2015-01091, slip op. at 12 (PTAB Oct. 30, 2015) (Paper No.
`
`18).
`
`
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`4
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`
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`Finally, the only alleged “efficiency” that the motion for joinder identifies is
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`that “only a single expert deposition and a single oral hearing will be required.”
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`Mot. at 7. As to the expert deposition, this is demonstrably incorrect. Dr.
`
`Bederson’s deposition in the First IPR has already been scheduled for February 16,
`
`2017. Paper No. 18. Additionally, the Patent Owner’s response is due in the First
`
`IPR by March 2. IPR2016-01407, Paper No. 14 at 8. By contrast, the preliminary
`
`response in the Second IPR is not due until May 1, 2017, and therefore any
`
`potential depositions in the Second IPR will not occur until long after the
`
`depositions will have already been completed and the Patent Owner’s response will
`
`have already been filed in the First IPR.
`
`Thus, Petitioners’ motion for joinder primarily relies on conclusory
`
`statements that joinder would be appropriate. The only specific arguments made
`
`by Petitioners—the degree of overlap and “efficiencies”—are illusory. Thus,
`
`Petitioners have not demonstrated that joinder is appropriate.
`
`B.
`
`Joinder is Inappropriate Because the Schedules of the Two Proceedings
`are Incompatible and Joinder Would Excessively Delay the First
`Proceeding
`
`In accordance with the statutory goal to complete inter partes review
`
`proceedings within one year from institution (35 U.S.C. § 316(a)(11)), this Board
`
`has sought to “secure the just, speedy, and inexpensive resolution of every
`
`proceeding.” 37 C.F.R. § 42.1. However, neither the statutory one-year goal, nor
`
`
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`5
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`
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`the goal of providing “speedy” resolution will be satisfied in the First IPR if
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`Petitioners’ motion for joinder is granted.
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`The notice of filing date accorded was issued in the First IPR on July 19,
`
`2016, and the notice of filing date accorded was issued in the Second IPR on
`
`February 1, 2017. Thus, the schedule for the First IPR will be more than six
`
`months ahead of the schedule for the Second IPR2. At least the following
`
`deadlines will have been completed in the First IPR before the Board will have
`
`sufficient opportunity to decide whether to institute the Second IPR: first
`
`deposition of Petitioners’ expert, Patent Owner’s response, deposition of Patent
`
`Owner’s expert, and Petitioner’s reply. IPR2016-01407, Scheduling Order (Paper
`
`No. 14). In short, the First IPR will be nearly complete before the Second IPR
`
`even has the chance to begin. Thus, there is no reasonable prospect for improved
`
`efficiency by consolidating these petitions.
`
`
`2 Additionally, the Board should deny any request or suggestion by Petitioners to
`
`shorten the time for Patent Owner to file a preliminary response in the second IPR.
`
`That would be unduly prejudicial to Patent Owner because, as discussed below, the
`
`Second IPR raises substantial new and different issues that the Patent Owner
`
`intends to address in its preliminary response.
`
`
`
`6
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`
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`Joinder is Inappropriate Because the Proceedings Involve Different
`Primary References and Different Issues
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`Patent No. 6,928,433
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`C.
`
`As noted above, one of the factors involved in deciding to grant joinder is
`
`whether the second petition sets forth “any new grounds of unpatentability.” This
`
`factor weighs strongly against granting joinder because all of the grounds in the
`
`Second IPR are new grounds. Indeed, the Second IPR requests cancellation of
`
`sixteen claims, presents a total of three grounds, and asks this Board to institute on
`
`these additional grounds even though this would result in two extra grounds for
`
`almost every claim in addition to the grounds already instituted in the First IPR.
`
`Pet. at 7; IPR2016-01407, Institution Decision, Paper No. 13 at 25. As stated
`
`above, although the Looney reference is involved in some of the instituted grounds
`
`in the First IPR, it is only relied on for a single claim limitation in a limited number
`
`of claims. IPR2016-01407, Institution Decision, Paper No. 13 at 22. By contrast,
`
`Looney is an anticipatory reference in the Second IPR and relied on by Petitioners
`
`for numerous limitations for every challenged claim. Pet. at 17.
`
`Moreover, contrary to Petitioners’ arguments, most of the issues involved in
`
`the Second IPR are substantially different from the issues involved in the First IPR.
`
`Indeed, every single ground in the Second IPR involves completely different
`
`primary references than the grounds which were instituted in the First IPR.
`
`Compare Pet. at 17 with IPR2016-01407, Institution Decision, Paper No. 13 at 25.
`
`
`
`7
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`
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`Moreover, the expert evidence at issue in the Second IPR is meaningfully different
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`Patent No. 6,928,433
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`from the First IPR. In particular, the Second IPR relies on seventy-three pages of
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`testimony from the Petitioners’ expert’s original declaration (addressing the
`
`Looney grounds) which is no longer at issue in the First IPR due to the denial of
`
`those grounds. Ex. 1006 at 20-93. Additionally, the Second IPR further adds a
`
`new supplemental declaration from Petitioners’ expert with ten additional pages of
`
`testimony. Ex. 1017.
`
`D. The Statutory and Regulatory Provisions for Joinder Only Provide for
`“Join[ing] as a Party,” Not Joinder of New Issues by an Existing Party
`
`Section 315(c) of Title 35 of the U.S. Code, which is the statutory basis for
`
`this Board’s joinder practice, only permits “join[ing] as a party.” Despite this,
`
`Petitioners point out that, in Target Corp. v. Destination Maternity Corp.,
`
`IPR2014-00508, slip op. (PTAB Feb. 12, 2015) (Paper No. 28), an expanded panel
`
`of this Board found, over dissent, that the joinder statute permits joinder of new
`
`issues by one who is already a party to a pending IPR. However, the Target
`
`opinion has not been issued as a precedential opinion by this Board. Therefore the
`
`panel that determines this motion is free to disagree and reach a different
`
`conclusion than the Target opinion. See Standard Operating Procedure 2 rev. 9,
`
`Patent Trial and Appeal Board, available at
`
`https://www.uspto.gov/sites/default/files/documents/sop2-revision-9-dated-9-22-
`
`
`
`8
`
`
`
`2014.pdf, at 3 (“A precedential opinion is binding authority in subsequent matters
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`Patent No. 6,928,433
`IPR2017-00595
`
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`involving similar facts or issues.”), at 4 (“A routine opinion is not binding
`
`authority.”).
`
`Indeed, the panel that decides this motion should reach a contrary conclusion
`
`for the reasons set forth by the dissent in the Target case:
`
`The plain language of § 315(c) permits the Director to join a “person”
`and only “as a party.” 35 U.S.C. § 315(c). . . . When Congress wanted
`to provide for the merger of multiple proceedings, it used language to
`that effect. See 35 U.S.C. § 315(d). It did not do so in § 315(c).
`
`Target Corp. v. Destination Maternity Corp., IPR2014-00508, slip op. at 17-20
`
`(PTAB Feb. 12, 2015) (Paper No. 28).
`
`E. Denying Joinder Would Not Prejudice Petitioners Because this Second
`Petition Was Filed Prior to Expiration of the One-Year Statutory Bar
`
`As Petitioners admit, the Second IPR was filed “months in advance of the
`
`§ 315(b) bar date.” Pet. at 5. Thus, whether or not this motion is granted has no
`
`impact on whether or not the Second IPR will be instituted. Cf. 35 U.S.C. § 315(b)
`
`(“The time limitation set forth in the preceding sentence shall not apply to a
`
`request for joinder under subsection (c)”). Because the motion for joinder does not
`
`control whether this Second IPR is instituted, denying the motion for joinder would
`
`cause no prejudice to Petitioners.
`
`
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`9
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`
`
`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`Patent No. 6,928,433
`IPR2017-00595
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`deny Petitioners’ motion for joinder.
`
`
`
`Date: February 6, 2017
`
`Respectfully submitted,
`
`
`/Jonathan D. Baker/
`Jonathan D. Baker, Reg. No. 45708
`Farney Daniels PC
`411 Borel Avenue, Suite 310
`San Mateo, California 94402
`Phone: 424-268-5210
`E-mail: jbaker@farneydaniels.com
`
`
`
`10
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`
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`CERTIFICATE OF SERVICE
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`Patent No. 6,928,433
`IPR2017-00595
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`Under 37 C.F.R. §§42.6(e), this is to certify that I served a copy of the
`
`foregoing PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION
`
`FOR JOINDER PURSUANT TO 37 C.F.R. § 42.23 via email on February 6, 2017
`
`to Petitioners’ counsel of record at the following email addresses:
`
`Randy J. Prizker, 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 Avenue
`Boston, MA 02210-2206
`Phone: 617-646-8000
`Fax: 617-646-8646
`E-mail:
`RPritzker-PTAB@wolfgreenfield.com
`MRader-PTAB@wolfgreenfield.com
`RAbrahamsen-PTAB@wolfgreenfield.com
`ATibbetts-PTAB@wolfgreenfield.com
`
`
`
`
`
`Dated: February 6, 2017
`
`
`/Jonathan D. Baker/
`Jonathan D. Baker, Reg. No. 45708
`
`
`
`11
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