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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SONOS, INC.,
`Petitioner,
`v.
`IMPLICIT, LLC,
`Patent Owner.
`______________________
`
`Case No. IPR2018-00767
`Patent No. 8,942,252
`______________________
`
`
`PATENT OWNER IMPLICIT, LLC’S OPENING BRIEF
`PURSUANT TO REMAND FROM THE UNITED STATES
`COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`
`Page
`Introduction ...................................................................................................... 1
`I.
`Background ...................................................................................................... 3
`II.
`III. Argument ......................................................................................................... 6
`A.
`Correction of Inventorship Is Retroactive, as Demonstrated by
`the Plain Language of Section 256, the Statutory Framework
`and Legislative Intent, as Well as Relevant Caselaw ............................ 6
`1.
`Statutory language and legislative intent strongly indicate
`that inventorship corrections have retroactive effect. ................. 7
`Caselaw determinations confirm that § 256 inventorship
`corrections have retroactive effect. ............................................. 8
`Section 256’s Retroactive Application Will “Reward Actual
`Inventors,” the Object of the Provision ............................................... 11
`1.
`Section 256 promotes public policy and should be
`construed liberally to benefit inventors. ................................... 11
`Inventorship is a complex analysis that may be informed
`by the determinations of fact-finders. ....................................... 12
`Section 256 does not have a diligence requirement and
`does not preclude “considered acts” from its ambit. ................ 14
`IV. Conclusion ..................................................................................................... 15
`
`
`B.
`
`2.
`
`2.
`
`3.
`
`
`
`Case IPR2018-00767
`Patent No. 8,942,252
`
`Table of Contents
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`i
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`Case IPR2018-00767
`Patent No. 8,942,252
`
`I.
`
`Introduction
`Implicit, LLC (“Implicit”) hereby submits this opening brief pursuant the
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`Board’s instruction (Paper 60 at 2-3) and following the limited remand order of the
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`United States Court of Appeals for the Federal Circuit (Implicit, LLC v. Sonos,
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`Inc., Nos. 20-1173, -1174, D.I. 85 (Fed. Cir. Nov. 9, 2022)).
`
`In view of the detailed Board findings in the Final Written Decisions
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`concerning Mr. Guy C. Carpenter’s contributions to the claimed inventions,
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`Implicit submitted all necessary fees and affidavits under § 1.324(b) to correct
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`inventorship of U.S. Patent Nos. 7,391,791 and 8,942,252 (collectively “the
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`patents-at-issue”). See infra § II (4)-(6). While the consolidated appeals of
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`IPR2018-00766 and IPR2018-00767 were pending before the Federal Circuit,1 the
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`Director granted both of Implicit’s petitions to correct the inventorship. See infra
`
`§ II (1), (6)-(8). Implicit relied on SIPCO, LLC v. Emerson Elec. Co. to seek and
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`obtain a remand to the Board for further consideration of its unpatentability
`
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`1 The Federal Circuit appeal (No. 2020-1173 (lead)) of the Board proceedings in
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`IPR2018-00766 for U.S. Patent No. 7,391,791 (“the ’791 patent”), was
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`consolidated with the appeal (No. 2020-1174) of the Board proceedings in
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`IPR2018-00767 for U.S. Patent No. 8,942,252 (“the ’252 patent”). See Implicit,
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`LLC v. Sonos, Inc., 2020-1173, -1174, D.I. 2 (Fed. Cir. Dec. 2, 2019).
`
`1
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`
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`Case IPR2018-00767
`Patent No. 8,942,252
`determinations given the issued certificates. See No. 2018-1364, D.I. 29 at 2-4
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`(Fed. Cir. Jun. 27, 2018) (unpublished) (where corrections were granted during
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`appeal, the court ordered the case “remanded for the Board to issue an order
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`addressing what, if any, impact the certificate of correction has on its final written
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`decision in this case.”). Significantly, the SIPCO case also explained that
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`corrections of inventorship under § 256 are accorded “retroactive” effect, i.e., as
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`though existing in corrected form from the date of patent issuance. Emerson Elec.
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`v. SIPCO, IPR2016-00984, Paper 52 at 17-21 (P.T.A.B. Jan. 24, 2020), aff’d, No.
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`2018-1364, D.I. 78 (Fed. Cir. Jan. 21, 2021); see infra § III.A.2.
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`Implicit respectfully requests on remand that the Board reconsider the Final
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`Written Decision of IPR2018-00767 (Paper 40) and reverse its unpatentability
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`determinations in light of the correct inventive entity applied retroactively. See
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`infra §§ III.A., IV. The Board previously relied on U.S. Patent No. 7,269,338 to
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`Janevski (“Janevski,” Ex.1007), which predates the provisional application
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`leading to the ’791 patent by just six days, to find all challenged claims
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`unpatentable.2 Paper 40 at 9-10.
`
`
`2 The Board previously held that Petitioner Sonos, Inc. (“Sonos”) demonstrated
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`that the ’791 patent’s claims 1–3, 6–9, 12, 16, 19, and 23–25 are anticipated by
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`Janevski; that claims 1–3, 6–9, and 12 would have been obvious in view of
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`2
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`Case IPR2018-00767
`Patent No. 8,942,252
`
`II. Background
`The following facts serve as background:
`
`1)
`
`The ’791 patent is entitled “Method and System for Synchronization of
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`Content Rendering” and issued on June 24, 2008. See IPR2018-00766, Ex. 1001.
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`The ’252 patent is a continuation of the ’791 patent and issued on January 27,
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`2015. See IPR2018-00767, Ex. 1001. The ’791 and ’252 patents both claim priority
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`to U.S. Provisional Application No. 60/341,574, filed on December 17, 2001.
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`IPR2018-00766, Ex. 1001 at [60]; IPR2018-00767, Ex. 1001 at [60].
`
`2)
`
`On March 9, 2018, Sonos filed petitions for inter partes review of the ’791
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`and ’252 patents, alleging unpatentability under 35 U.S.C. §§ 102-103 and relying
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`in each of its grounds on Janevski. See supra n.2. Janevski has an effective filing
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`date of December 11, 2001. Paper 40 at 9-10; Ex. 1007, at [22].
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`3)
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`Implicit attempted to antedate Janevski in the IPR proceedings. See
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`IPR2018-0767, Paper 9 (POR) at 14-31 (and cited exhibits). Implicit detailed the
`
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`Janevski alone; and that claims 1–3, 6–9, and 12 would have been obvious over the
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`combination of Janevski and Schneidewend. See IPR2018-00766, Paper 46 at 2,
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`50. The Board also held that the ’252 patent’s claims 1–3, 8, 11, and 17 would
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`have been obvious over the combination of Janevski and other references. Paper 40
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`at 3, 53-54.
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`3
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`Case IPR2018-00767
`Patent No. 8,942,252
`activities of two the named inventors—Mr. Balassanian and Mr. Bradley—as they
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`worked on the “Juno Project,” including how they interacted with the company’s
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`Engineering Master, Mr. Carpenter, to implement the inventions of the challenged
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`claims. See id. at 14-16, 19-31; see Ex. 2001, ¶¶ 26-32; Ex. 2009 at 15; Ex. 2011 at
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`8, 37-38. Implicit asserted that the claimed subject matter was conceived and
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`reduced to practice two days prior to Janevski’s filing date. See IPR2018-00767,
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`Paper 9 (POR) at 14–31; Ex. 2001, ¶¶ 6, 33, 42-47; Hear’g Tr. 35:2–5, 40:2–43:7;
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`see also Ex. 2001; Ex. 2008; Ex. 2011; Exs. 2012-13; Exs. 2015-16; Ex. 2018;
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`Exs. 2020-21; Exs. 2025-29; Ex. 2031; Exs. 2032-34; Exs. 2037-38; Ex. 2056; Ex.
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`2060; Ex. 2063; Ex. 2065; Exs. 2074-75; Exs. 2077-78; Ex. 2080; Exs. 2082-87);
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`Paper 40 at 19-23; accord IPR2018-0766, Paper 13 (POR) at 13-31 (and cited
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`exhibits).
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`4)
`
`The Board found the document entitled “synchronization.doc” (Ex. 2037)
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`was filed on December 17, 2001, as the provisional
`application to which the ʼ252 Patent claims priority and
`which Patent Owner contends was drafted at least as
`early as December 9, 2001. The evidence shows,
`however, that the December 9 version of this document,
`which appears to be the version that was the basis for
`the provisional application, was authored by non-
`inventor Mr. Carpenter.
`Paper 40 at 20 (emphasis added) (citing Ex. 2038; Ex. 2077). According to the
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`Board, there was no evidence “that anyone else was involved in development of
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`4
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`Case IPR2018-00767
`Patent No. 8,942,252
`the source code besides Mr. Carpenter.” See IPR2018-00766, Paper 46 at 21; Ex.
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`2077 at 30-35; Ex. 2038.
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`5)
`
`The Board found that Mr. Carpenter’s source code conception and reduction
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`to practice occurred before the patent to Janevski was filed but held that it did not
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`inure to the two inventors then named on the challenged patents—Mr. Balassanian
`
`and Mr. Bradley. Paper 40 at 15-22. Accordingly, the Board held that Janevski
`
`constituted prior art for all of its conclusions of unpatentability. Id. at 23, 53.
`
`6)
`
`In December of 2021, Implicit informed the Director that it had pursued its
`
`statutory rights under § 256 and petitioned for certificates of correction to add Mr.
`
`Carpenter as an inventor to the patents-at-issue. Paper 46 at 2-3, 10-11. Implicit
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`explained that such corrections of inventorship have “retroactive” effect and
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`included citations to supporting caselaw such as SIPCO. Id. at 3 (asserting that
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`“With such a change to the inventorship, Implicit would successfully antedate the
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`Janevski reference.”), 5-9 (explaining inventitive and procedural history); 11-14
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`(collecting cases on retroactive application). Separately, the Director granted
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`Implicit’s “Petition for Correction of Inventorship Under 37 CFR § 1.324” for both
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`the ’791 and ’252 patents, adding Mr. Carpenter as a coinventor; the formal
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`certificates issued in August 2022. See IPR2018-00766, Ex. 2097 (Certificate of
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`Correction for the ’791 patent (Aug. 13, 2022)); IPR2018-00767, Ex. 2097
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`(Certificate of Correction for the ’252 patent (Aug, 9, 2022)).
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`5
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`Patent No. 8,942,252
`On August 29, 2022, with the inventorship correction formalized by the
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`7)
`
`Director, Implicit renewed its motion before the Federal Circuit seeking a remand
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`to the Board by relying on SIPCO, LLC v. Emerson Elec. Co. See Implicit, LLC v.
`
`Sonos, Inc., Nos. 20-1173, -1174, D.I. 84 at 1 (Fed. Cir. Nov. 9, 2022); see also
`
`Implicit, LLC v. Sonos, Inc., Nos. 20-1173, -1174, D.I. 78 & 80 (Fed. Cir. June 9 &
`
`28, 2022) (motion for remand and reply brief).
`
`8)
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`On November 9, 2022, the Federal Circuit retained jurisdiction over the
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`pending consolidated appeals, but upon consideration of Implicit’s motion, granted
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`a limited remand for “the PTAB [to] issue an order addressing what, if any, impact
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`the certificates of correction would have on the final written decisions in these
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`cases.” Implicit, LLC v. Sonos, Inc., Nos. 20-1173, -1174, D.I. 85 (Fed. Cir. Nov.
`
`9, 2022). This briefing followed by order of the Board. (Paper 60.)
`
`III. Argument
`A. Correction of Inventorship Is Retroactive, as Demonstrated by
`the Plain Language of Section 256, the Statutory Framework and
`Legislative Intent, as Well as Relevant Caselaw
`“[W]e begin, of course, with the language of the statutes at issue. However,
`
`to fully understand the meaning of the statute, we look ‘not only to the particular
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`statutory language, but to the design of the statute as a whole and to its object and
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`policy.’” Assoc’d Elec. Coop., Inc. v. United States, 226 F.3d 1322, 1326 (Fed. Cir.
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`2000) (quoting Crandon v. United States, 494 U.S. 152, 158 (1990)).
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`6
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`Statutory language and legislative intent strongly indicate
`that inventorship corrections have retroactive effect.
`As a matter of plain statutory language, correction certificates altering
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`1.
`
`inventorship are retroactively applicable as if in the original patent issuance,
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`because no language in § 256(a) restricts such application:
`
`Whenever . . . through error an inventor is not named in
`an issued patent, the Director may, on application of all
`the parties and assignees, with proof of the facts and such
`other requirements as may be imposed, issue a certificate
`correcting such error.
`The error of omitting inventors or naming persons who
`are not inventors shall not invalidate the patent in which
`such error occurred if it can be corrected as provided in
`this section.
` 35 U.S.C. § 256.
`
`Related correction provisions in the Patent Act, such as §§ 254 and 255,
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`contain an explicit limitation “for causes thereafter arising,” but such prospective-
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`bound language is entirely absent from inventorship corrections of § 256. Cf. S.W.
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`Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1294-96 (Fed. Cir. 2000)
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`(rejecting the retroactive application of a certificate of correction issued under
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`§ 254, because, inter alia, like § 255, it “contains language concerning ‘causes
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`thereafter arising’”).
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` Based on this plain language analysis—including of the statutory
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`framework at large—the legislative intent of these correction provisions is clear:
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`7
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`Patent No. 8,942,252
`The very notion that Congress carved out a separate
`section for correction of inventorship indicates its
`intention to treat it in a different way than the much
`larger subset of corrections that Section 254
`encompasses. Thus, here the canon of statutory
`interpretation known as generalia specialibus non
`derogant (general provisions do not qualify specific
`ones) is applicable. . . . [A] Certificate of Correction
`issued for correction of inventorship has retroactive
`effect.
`Roche Palo Alto LLC v. Ranbaxy Labs. Ltd., 551 F. Supp. 2d 349, 357, 359 (D.N.J.
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`2008) (emphasis added); see also P.J. Federico, Commentary on the New Patent
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`Act, 35 U.S.C.A. 1, 50 (1954), reprinted in 75 J. Pat. & Trademark Off. Soc’y 163,
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`211 (1993) (“[N]onjoinder of joint inventors shall not invalidate a patent if the
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`mistake is one that can be corrected under the section, that is, arose by error . . . .”).
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`2.
`
`Caselaw determinations confirm that § 256 inventorship
`corrections have retroactive effect.
`Numerous tribunals—including the Patent Trial and Appeal Board—have
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`agreed that corrections of inventorship under § 256 are to be given “retroactive”
`
`effect, i.e., as though existing in corrected form from the date of patent issuance.
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`The SIPCO case is highly instructive. SIPCO argued that due to applicant’s
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`clerical error during prosecution, the parent application was identified by the
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`wrong number on the face of the patent. The Board concluded nevertheless that
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`various claims were unpatentable in view of the grandparent patent based on the
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`uncorrected priority date. Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984,
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`8
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`Case IPR2018-00767
`Patent No. 8,942,252
`Paper 43 at 61 (P.T.A.B. Oct. 25, 2017). SIPCO then petitioned for a correction
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`under § 255. The Federal Circuit granted patentee’s motion to remand to the Board
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`to consider the effect of the certificate of correction that issued after entry of the
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`Board’s final written decision. See SIPCO, No. 2018-1364, D.I. 29 at 2-4.
`
`On remand, the Board in SIPCO determined by analysis of adjacent
`
`statutory language that § 256 does have retroactive effect, whereas § 255 does not:
`
`A comparison of § 255 with § 256 further indicates that
`§ 255 does not have retroactive effect. Section 256
`authorizes the Director to issue a certificate to correct
`named inventor errors . . . . § 256 provides for retroactive
`effect of a certificate correcting named inventorship. By
`stating that the error shall not invalidate the patent,
`certificates issued under this section have retroactive
`effect in general. This is in contrast with § 255, which
`does not include any similar provision.
`Our interpretation of § 256 as having retroactive effect is
`consistent with the Federal Circuit’s decision in
`Vikase . . . [and] with the district court’s decision in
`Roche . . . .
`Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984, Paper 52 at 17-21 (P.T.A.B.
`
`Jan. 24, 2020) (on remand) (emphasis added) (citing approvingly to Vikase Corp.
`
`v. Am. Nat’l Can Co., 261 F.3d 1316, 1329 (Fed. Cir. 2001) and Roche, 551 F.
`
`Supp. 2d at 355). Accordingly, based on applicable caselaw, the Board has already
`
`correctly reasoned that “certificates issued under this section [256] have retroactive
`
`effect in general.” See id. (emphasis added); aff’d, SIPCO, No. 2018-1364, D.I. 78
`
`9
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`Patent No. 8,942,252
`(Fed. Cir. Jan. 21, 2021) (Fed. Cir. R. 36). The Federal Circuit subsequently
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`affirmed the Board’s determination without opinion. Id.
`
`
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`Similarly, the Federal Circuit approved a “retroactive” rationale for § 256 in
`
`Viskase Corp., affirming the district court’s rejection of arguments that a family of
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`patents could be found invalid during a period of incorrect inventorship, despite a
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`granted petition to correct inventorship. See 261 F.3d at 1328-29. The Federal
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`Circuit held that: “Absent fraud or deceptive intent, the correction of inventorship
`
`does not affect the validity or enforceability of the patent for the period before the
`
`correction. . . . 35 U.S.C. § 256 provides that an error of inventorship does not
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`invalidate the patent if such error ‘can be corrected as provided in this section.’”
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`Id. (emphasis added).
`
`Many other federal trial courts have come to the same conclusion regarding
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`the retroactive effect of corrections granted under § 256. Roche, 551 F. Supp. 2d at
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`358 (“[T]here are many federal cases that have given retrospective effect to a
`
`Certificate of Correction when it regards correction of inventorship. . . .”)
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`(collecting cases). Roche’s exhaustive examination of § 256—which has been
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`acknowledged by the Board as persuasive on this issue—concluded that patentee
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`“has properly sought and obtained a Certificate of Correction to correct its
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`improper inventorship. . . . [T]he Court holds that the July 24, 2007 Certificate of
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`Correction issued for correction of inventorship has retroactive effect.” Id. at 359.
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`10
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`Patent No. 8,942,252
`If as a matter of law the now-corrected inventorship on the ’791 and ’252
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`patents has retroactive effect, then the new inventive entity with Mr. Carpenter
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`shows conception and reduction to practice of the relevant source code by
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`December 9, 2001, two days before Janevski’s effective date. See supra § II (2)-
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`(6). The provisional application disclosing the invention was diligently filed just
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`six business days later, by December 17, 2001. See supra § II (1), (4).
`
`B.
`
`Section 256’s Retroactive Application Will “Reward Actual
`Inventors,” the Object of the Provision
`Section 256 promotes public policy and should be construed
`1.
`liberally to benefit inventors.
`The plain reading of the statute above is also consistent with the “strong
`
`public policy rationale for making a change of inventorship retroactive in effect.”
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`See, e.g., Roche, 551 F. Supp. 2d at 357 n.5.
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`The Federal Circuit has recognized that § 256 was enacted as a “savings
`
`provision” to attenuate the harsh effects on actual inventors of errors in
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`ascertaining proper inventorship. Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d
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`1367, 1377 (Fed. Cir. 2020); see also S. Rep. No. 82-1979, at 7-8 (1952), reprinted
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`in 1952 U.S.C.C.A.N. 2394, 2401-02 (“Very often two or three people make an
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`invention together. They must apply as joint inventors. If they make a mistake in
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`determining who are the true inventors, they do so at their peril. This provision
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`11
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`Patent No. 8,942,252
`permits a bona fide mistake in joining a person as [an] inventor or in failing to join
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`a person as an inventor to be corrected.”).
`
`Provisions such as § 256, therefore, “should be given a liberal construction
`
`in favor of applicants, permitting them to make such changes as more thorough
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`consideration of facts may show to be necessary in order to comply accurately with
`
`the law in naming inventors.” Patterson v. Hauck, 341 F.2d 131, 138 (CCPA
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`1965).
`
`2.
`
`Inventorship is a complex analysis that may be informed by
`the determinations of fact-finders.
`Recently, Egenera, Inc. v. Cisco Systems, Inc. reiterated that, “Inventorship
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`is sometimes easy to determine. But sometimes it is complicated, with complex
`
`projects involving many contributors at various times.” 972 F.3d at 1376.
`
`According to the Federal Circuit, the inventorship analysis can even be
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`informed by a tribunal’s view of the evidence, thereby provoking a subsequent
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`correction petition. See id. at 1376-78. The Egenera court eschewed suggestions
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`that even a once-deleted party from the face of the patent should not be permitted
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`to have his name added back after trial evidence established him to be an actual
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`inventor. See id. It simply did not matter that contrary inventorship arguments were
`
`previously made. See id. Here too, Implicit was justified in correcting inventorship
`
`notwithstanding what it may have argued prior to the Board’s extensive factfinding
`
`regarding Mr. Carpenter and his contributions. See supra § II (3)-(5). On appeal,
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`12
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`Sonos alleged that Implicit inconsistently argued during trial proceedings that Mr.
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`Carpenter’s contributions were made merely as a company employee. See supra
`
`§ II (3)-(6); see Implicit, LLC v. Sonos, Inc., Nos. 20-1173, -1174, D.I. 79 at 3-4,
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`15-16 (Fed. Cir. June 20, 2022) (Sonos reply brief). Sonos’s arguments miss the
`
`point: the subsequently filed corrections reflect the Board’s determinations, after a
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`more “thorough consideration of the facts.” Patterson, 341 F.2d at 138. Implicit’s
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`earlier statements to the contrary are immaterial. See Egenera, 972 F.3d at 1379
`
`(rejecting argument that “clearly inconsistent positions” precluded use of later
`
`§ 256 correction and explaining that after the court decided predicate questions, “it
`
`was entirely consistent for Egenera to request an accompanying formal correction
`
`of inventorship”).
`
`The corrections here are not improper and align with the very purpose of
`
`§ 256—to effect “title 35[’s] policy of seeking to reward the actual inventors of
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`technological advances.” See id. at 1377 (citing Stark v. Advanced Magnetics, Inc.,
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`119 F.3d 1551, 1554 (Fed. Cir. 1997)). The Board’s role in elucidating proper joint
`
`inventorship furthers this important policy goal.
`
`Moreover, this is a deserving and unique fact pattern—the primary reference
`
`for each and every ground of unpatentability was found to predate the effective
`
`filing date by just six days and the issue was central to the Board’s ultimate
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`determination with a robust evidentiary record, invested parties, and several
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`13
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`Patent No. 8,942,252
`intermediate determinations. This case should be one to benefit from the
`
`congressional intent to reward actual inventors.
`
`3.
`
`Section 256 does not have a diligence requirement and does
`not preclude “considered acts” from its ambit.
`As further evidence of its intended liberality, § 256 “does not limit the time
`
`during which inventorship can be corrected” and “diligence is not a requirement to
`
`correct inventorship under section 256.” Stark, 119 F.3d at 1554; Stark v.
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`Advanced Magnetics, Inc., 29 F.3d 1570, 1573 (Fed. Cir. 1994) (emphases added).
`
`Having no timeliness requirement makes sense given the complexity of
`
`inventorship questions, the difficulty of discovering errors years after filing
`
`applications, the procedural requirements to effect a formal change under 37 CFR
`
`§ 1.324, and the legal implication of doing so. See id. (by giving wide latitude on
`
`the timing of corrections, “[s]ection 256 thus serves the public policy of preserving
`
`property rights from avoidable forfeiture”). Despite Sonos’s protests with respect
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`to timing throughout its briefs, the Federal Circuit still saw fit to remand this case
`
`for a substantive analysis “addressing what, if any, impact the certificate of
`
`correction has on its final written decision in this case.” Implicit, LLC v. Sonos,
`
`Inc., Nos. 20-1173, -1174, D.I. 85 (Fed. Cir. Nov. 9, 2022). There is no suggestion
`
`from the court that Implicit was not entitled to seek corrections when it did.
`
`Nor does characterizing this as a “considered act” by Implicit disqualify the
`
`corrections because of how they were sought. In fact, the AIA liberalized the
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`14
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`Case IPR2018-00767
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`application of § 256 even further, making inventorship corrections available in
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`more circumstances. The Federal Circuit has explained that “the AIA did not
`
`narrow the meaning of ‘error.’ Accordingly, § 256 does not exclude ‘considered
`
`acts,’ or even ‘deceptive intention,’ from the meaning of ‘error.’” See Egenera,
`
`Inc., 972 F.3d at 1377; cf. 157 Cong. Rec. S1378 (daily ed. Mar. 8, 2011)
`
`(statement of Sen. Kyl) (“Eliminating the various deceptive-intent requirements
`
`moves the U.S. patent system away from the 19th century model that focused on
`
`the patent owner’s subjective intent, and towards a more objective-evidence-based
`
`system that will be much cheaper to litigate and more efficient to administer.”).
`
`IV. Conclusion
`For the foregoing reasons, the Board, respectfully, should issue an order:
`
`holding the certificates of inventorship correction have retroactive effect; finding
`
`the corrected inventive entity successfully antedates Janevski’s effective date on
`
`the record submitted; and reversing the outcome of its Final Written Decisions,
`
`specifically finding that all grounds relying on Janevski fail to demonstrate that the
`
`challenged claims in the ’791 and ’252 patents are unpatentable.
`
`Date: February 10, 2023
`
`
`
`
` Respectfully submitted,
`
`
`
`/Timothy P. McAnulty/
`Timothy P. McAnulty, Reg. No. 56,939
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Counsel for Patent Owner Implicit, LLC
`
`
`15
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2018-00767
`Patent No. 8,942,252
`
`The undersigned certifies that a copy of the foregoing PATENT OWNER
`
`IMPLICIT, LLC’S OPENING BRIEF PURSUANT TO REMAND FROM
`
`THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL
`
`CIRCUIT was served electronically via email on February 10, 2023, in its entirety
`
`on the following:
`
`Rory P. Shea
`shea@ls3ip.com
`Cole B. Richter
`richter@ls3ip.com
`George I. Lee
`lee@ls3ip.com
`Michael P. Boyea
`boyea@ls3ip.com
`LEE SULLIVAN SHEA & SMITH LLP
`224 N. Desplaines St., Suite 250
`Chicago, IL 60661
`
`Petitioner has consented to service by electronic mail.
`
`
`
`
`
`/William Esper/
`William Esper
`Case Manager and PTAB Coordinator
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`
`Dated: February 10, 2023
`
`
`
`
`
`
`
`
`
`
`
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