Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`SONY CORPORATION, SONY MOBILE COMMUNICATIONS (USA) INC.,
`SONY MOBILE COMMUNICATIONS AB & SONY MOBILE
`COMMUNICATIONS INC.,
`Petitioners,
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`v.
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`CREATIVE TECHNOLOGY LIMITED,
`Patent Owner.
`_____________
`
`Case No. IPR2017-00595
`Patent No. 6,928,433
`_____________
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`PETITIONERS’ REPLY TO PATENT OWNER’S
`OPPOSITION TO MOTION FOR JOINDER
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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
`_____________
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`PETITIONERS’ REPLY TO PATENT OWNER’S
`OPPOSITION TO MOTION FOR JOINDER
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`TABLE OF CONTENTS
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`I. ARGUMENT ..................................................................................................... 1
`A. Joinder Is Appropriate Because the Prior Art and Arguments
`Here Are Substantially Similar to Those of the First IPR. .......................... 1
`B. Any Delay in the First IPR Schedule Would Be
`Modest and Will Not Prejudice the Patent Owner. ..................................... 3
`C. Filing Months in Advance of the § 315(b) Bar Favors Joinder. ................. 4
`D. Precedent Supports Joining IPR Proceedings By the Same Party. ............. 5
`II. CONCLUSION .................................................................................................. 5
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`- i -
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`TABLE OF AUTHORITIES
`
`CASES
`Ariosa Diag. v. Isis Innov. Ltd.,
`IPR2013-00250, Paper 24 (Sep. 3, 2013) ...........................................................1, 3
`
`Microsoft Corp. v. Bradium Tech. LLC,
`IPR2016-00449, Paper 9 (July 27, 2016) ............................................................... 4
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`Oxford Nanopore Tech. Ltd. v. Univ. of Wash.,
`IPR2015-00057, Paper 10 (Apr. 27, 2015) ........................................................1, 3
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`Roche Molecular Systems Inc. v. Illumina, Inc.,
`IPR2015-01091, Paper 18 (Oct. 20, 2015) ............................................................. 3
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`Samsung Elec. Co., Ltd. v. Virginia Innov. Scis.,
`IPR2014-00557, Paper 10 (Jun. 13, 2014) .........................................................1, 3
`
`Sony Corp. of Am. v. Network-1 Security Solutions, Inc.,
`IPR2013-00495, Paper 13 (Sept. 25, 2015) ........................................................... 3
`
`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, Paper 28 (Feb. 12, 2015) ............................................................. 5
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`Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp.,
`IPR2015-00762, Paper 16 (Oct. 5, 2015) ...................................................... 1, 3, 5
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`REGULATIONS
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`37 C.F.R. § 42.122(b) ................................................................................................ 3
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`- ii -
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`Joinder should be granted because it will secure the just, speedy, and
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`inexpensive resolution of both IPR trials.
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`I.
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`ARGUMENT
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`A.
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`Joinder Is Appropriate Because the Prior Art and Arguments
`Here Are Substantially Similar to Those of the First IPR.
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`Patent Owner opposes joinder because “the grounds are not identical.”
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`Opp. at 4. However, the Board frequently joins IPR proceedings where, as here,
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`first and second IPR petitions filed by the same petitioners involve similar, though
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`not identical, prior art and issues. E.g., Ariosa Diag. v. Isis Innov. Ltd., IPR2013-
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`00250, Paper 24 (Sep. 3, 2013); Samsung Elec. Co., Ltd. v. Virginia Innov. Scis.,
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`IPR2014-00557, Paper 10 (Jun. 13, 2014); Oxford Nanopore Tech. Ltd. v. Univ. of
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`Wash., IPR2015-00057, Paper 10 (Apr. 27, 2015); Zhongshan Broad Ocean Motor
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`Co., Ltd. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (Oct. 5, 2015). Joinder
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`is appropriate when similarity of issues presents an opportunity for some (even if
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`not perfect) efficiencies. Samsung, IPR2014-00557, Paper 10 at 17-18.
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`Here, the issues in the First IPR and the Second Petition substantially
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`overlap: the same parties, the same patent, the same challenged claims, the same
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`claim constructions, the same prior art, and similar grounds.
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`- 1 -
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`The Second Petition includes grounds primarily based on Looney (Ex. 1009)
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`and cites nearly identical disclosures within Looney as the First Petition. The First
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`Petition cited software functionality of Looney and a hardware embodiment that
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`executes that software. The Second Petition cites the same software disclosures of
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`Looney, but to account for the Board’s preliminary construction of “portable media
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`player” in the First IPR (the Board adopted a construction not proposed by either
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`party), the Second Petition cites a different hardware embodiment of Looney.
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`Patent Owner’s Opposition fails to address the Motion’s explanation that
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`joinder will not prejudice Patent Owner because Patent Owner is already familiar
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`with the prior art cited in the Second Petition. The cited teachings of Looney were
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`largely the basis for Grounds 1-3 in the First Petition, which Patent Owner
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`addressed in its Preliminary Patent Owner Response in the First IPR. Patent
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`Owner notes differences between the functionality of Looney cited in instituted
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`Grounds 7-9 of the First IPR and in the Second Petition’s grounds. Opp. at 4, 7.
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`Yet, the teachings of Looney cited in the Second Petition are at issue in instituted
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`Grounds 7-9 of the First IPR. Patent Owner itself relies on those same teachings in
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`disputing how Petitioners propose that a POSA would have viewed Looney
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`together with other references. First IPR (IPR2016-01407), Paper 10, at 54-55.
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`Patent Owner’s own reliance on these same teachings in the First IPR confirm that
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`the overlap of issues between the First IPR and the Second Petition is substantial.
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`- 2 -
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`Patent Owner cites Roche Molecular Systems Inc. v. Illumina, Inc.,
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`IPR2015-01091, Paper 18 at 12 (Oct. 20, 2015), in arguing that joinder is only
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`appropriate when the issues are identical. Opp. at 4. Roche turned on a
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`petitioner’s failure to request joinder within one month of institution of the first
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`IPR, 37 C.F.R. § 42.122(b), and the petitioner’s request for waiver of that codified
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`rule. In denying the requested waiver, the Board noted that waiver was granted in
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`a prior case in which the second-filed petition raised identical grounds as a first
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`petition1 – but never suggested that joinder requires identical issues. IPR2015-
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`01091, Paper 18 at 11-12. Roche is irrelevant here, as no waiver is sought.
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`B.
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`Any Delay in the First IPR Schedule Would Be
`Modest and Will Not Prejudice the Patent Owner.
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`Patent Owner provides no explanation why the two proceedings’ schedules
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`are incompatible, instead simply noting a six-month difference in filing dates.
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`Opp. at 5-6. But this difference is routine for joinder, as are schedule adjustments
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`to compensate. See Zhongshan, Paper 16 (Oct. 5, 2015) (7-month difference in
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`filing dates); Oxford, Paper 10 at 24 (7-month difference); Samsung, Paper 10 at 18
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`(June 13, 2014) (7-month difference); Ariosa, Paper 24 (6-month difference).
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`1 Sony Corp. of Am. v. Network-1 Security Solutions, Inc., IPR2013-00495, Paper
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`13 at 9 (Sept. 25, 2015) (waiving one-month requirement for identical petition
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`where petitioner agreed to a limited “understudy” role in the proceedings).
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`- 3 -
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`Patent Owner also ignores Petitioners’ offer to agree to the same schedule
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`for both cases, and/or for Petitioners to bear the burden of any schedule adjustment
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`by shortening Petitioner’s own period for preparing a Reply. Petitioners never
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`suggested that Patent Owner should have its deadline shortened. Cf. Opp. at 6 n.2.
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`The Second IPR’s schedule is also now largely in Creative’s control.
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`Despite arguing that the Second Petition is simply “re-arguing the same invalidity
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`grounds” as the First Petition, Opp. at 1, Creative still has not submitted a
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`Preliminary Response to the Second Petition. Depending on the timing of
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`Creative’s Preliminary Response (and the Board’s ruling on the joinder motion),
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`Creative’s expert could be deposed one time for both IPRs. Creative does not
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`dispute Petitioner’s argument that joinder could enable a single deposition of
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`Creative’s expert. Opp. at 5 (focusing on the deposition of Petitioners’ expert).
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`C.
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`Filing Months in Advance of the § 315(b) Bar Favors Joinder.
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`That Petitioners “filed months in advance of the § 315(b) bar date,” Opp. at
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`9, weighs for—not against—granting joinder. The § 315(b) bar date “protects the
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`Patent Owner from prejudice resulting from serial attacks by the same Petitioner.”
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`Microsoft Corp. v. Bradium Tech. LLC, IPR2016-00449, Paper 9 at 8 (July 27,
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`2016). Here, Petitioners are not attempting to use joinder to save an untimely
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`second Petition, so the policy concerns underlying the bar are not implicated.
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`- 4 -
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`D.
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`Precedent Supports Joining IPR Proceedings By the Same Party.
`Patent Owner ignores Board decisions—both before and after Target Corp.
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`v. Destination Maternity Corp., IPR2014-00508, Paper 28 (Feb. 12, 2015)—that
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`agree with Target’s majority opinion that § 315(c) authorizes joinder of two
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`proceedings involving the same parties. Mot. at 7; Opp. at 8-9. Patent Owner cites
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`only a dissent, without explaining why it should control here. Dissenting judges in
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`two past cases have focused on the importance of not allowing petitioners to use
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`joinder to avoid a time bar, see Target, dissent at 17-19, Zhongshan, dissent at 1-3
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`— a concern that is absent here.
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`II. CONCLUSION
`Petitioners respectfully request that their Second IPR Petition be instituted,
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`and that the Board grant joinder with the First IPR (i.e., IPR2016-01407).
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`Dated: March 6, 2017
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`Respectfully submitted,
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`/Andrew J. Tibbetts/
`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 Avenue
`Boston, MA 02210-2206
`Tel: 617-646-8000/Fax: 617-646-8646
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`- 5 -
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4)
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`I certify that on March 6, 2017, I will cause a copy of the foregoing
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`document, including any exhibits or appendices referred to therein, to be served via
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`electronic mail, as previously consented to by Patent Owner, upon the following:
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`Jonathan D. Baker
`Russell Swerdon
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`Gurtej Singh
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`JBaker@farneydaniels.com
`Russ_Swerdon@creativelabs.com
`tsingh@farneydaniels.com
`CreativeZen@farneydaniels.com
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`Date: March 6, 2017
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`/MacAulay S. Rush /
`MacAulay S. Rush
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`
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