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`Paper No. 57
`IPR2018-00767
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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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`SONOS, INC.
`Petitioner
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`v.
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`IMPLICIT, LLC
`Patent Owner
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`IPR2018-00767
`U.S. Patent No. 8,942,252
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`PETITIONER’S OPENING BRIEF AFTER REMAND
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................... i
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`TABLE OF AUTHORITIES ................................................................................... iii
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`INTRODUCTION ..................................................................................................... 1
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`I.
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`THE CERTIFICATES OF CORRECTION DO NOT CURE
`INVALIDITY DECIDED IN THESE FINAL WRITTEN
`DECISIONS .................................................................................................... 1
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`A.
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`B.
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`The Certificates of Correction do not Impact Invalidity Arising
`Under 35 U.S.C. §§ 102(a), (b), and (e) and 103(a) Decided in
`the Final Written Decisions ................................................................... 2
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`Implicit’s Caselaw Does Not Support Revisiting the Final
`Written Decisions in View of the Certificates of Correction ................ 3
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`II.
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`DOCTRINES OF JUDICIAL ESTOPPEL AND WAIVER
`PRECLUDE THE CERTIFICATES OF CORRECTION FROM
`HAVING RETROACTIVE EFFECT ON THE FINAL WRITTEN
`DECISIONS .................................................................................................... 6
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`A.
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`B.
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`Judicial Estoppel Prevents the Certificates of Correction from
`Having Retroactive Effect on the Final Written Decisions................... 6
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`Implicit Waived the Opportunity to Argue that Carpenter is an
`Inventor.................................................................................................. 9
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`III. EVEN IF THE BOARD CONSIDERS THE CERTIFICATES OF
`CORRECTION, THEY WOULD NOT CHANGE THE ULTIMATE
`RESULT OF THE FINAL WRITTEN DECISIONS ...................................11
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`A.
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`B.
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`Certificates of Correction Can Be Entered on Invalid Patents
`Without Affecting Invalidity ...............................................................11
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`The Board Would Be Required to Consider The Old Evidence
`Again Under Implicit’s New Inventorship Theory .............................12
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`i
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`IV. REVERSING THE INVALIDITY DETERMINED IN THE FINAL
`WRITTEN DECISIONS WOULD VIOLATE THE
`ADMINISTRATIVE PROCEDURE ACT AND DUE PROCESS ..............14
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`V.
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`CONCLUSION ..............................................................................................15
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`ii
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`CASES
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`TABLE OF AUTHORITIES
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`Dell Inc. v. Acceleron, LLC,
`818 F.3d 1293 (Fed. Cir. 2016) ................................................................... 14, 15
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`Egenera, Inc. v. Cisco Sys., Inc.,
`972 F.3d 1367 (Fed. Cir. 2020) ........................................................................3, 4
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`Fairchild (Taiwan) Corp. v. Power Integrations, Inc.,
`854 F.3d 1364 (Fed. Cir. 2017) ............................................................................ 6
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`Finjan, Inc. v. Cisco Sys., Inc.,
`837 F. App’x 799 (Fed. Cir. 2020) .....................................................................10
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`Frank's Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd.,
`292 F.3d 1363 (Fed. Cir. 2002) ..........................................................................12
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`Heat Techs., Inc. v. Papierfabrik Aug. Koehler Se,
`2019 WL 3430477 (Fed. Cir. July 18, 2019) ......................................................12
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`Home Prod. Int’l, Inc. v. United States,
`633 F.3d 1369 (Fed. Cir. 2011) ............................................................................ 6
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`In re Apple,
`562 F. App’x 983 (Fed. Cir. 2014) ....................................................................... 6
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`In re Dunn,
`349 F.2d 433 (C.C.P.A. 1965) .............................................................................. 5
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`In re Google Tech. Holdings LLC,
`980 F.3d 858 (Fed. Cir. 2020) ............................................................................10
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`In re VerHoef,
`888 F.3d 1362 (Fed. Cir. 2018) ............................................................................ 2
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`Interactive Gift Exp., Inc. v. Compuserve Inc.,
`256 F.3d 1323 (Fed. Cir. 2001) ............................................................................ 9
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`New Hampshire v. Maine,
`532 U.S. 742 (2001) .............................................................................................. 7
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`iii
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`Qualcomm Inc. V. Intel Corp,
`6 F.4th 1256 (Fed. Cir. 2021) ...................................................................... 14, 15
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`SIPCO, LLC v. Emerson Elec. Co.,
`2018-1364 (Fed. Cir. Jun. 27, 2018) ..................................................................... 5
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`Transclean Corp. v. Jiffy Lube Intern., Inc.,
`474 F.3d 1298 (Fed. Cir. 2007) ................................................................... 7, 8, 9
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`United States v. Olano,
`507 U.S. 725 (1993) ............................................................................................10
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`VirnetX Inc. v. Apple Inc.,
`665 F. App’x 880 (Fed. Cir. 2016) .............................................................. 10, 11
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`STATUTES
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`35 U.S.C. § 102(f) ...................................................................................................... 2
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`35 U.S.C. § 256(b) ..................................................................................................... 2
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`5 U.S.C. § 554(c) .....................................................................................................14
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`5 U.S.C. § 556(d) .....................................................................................................14
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`iv
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`INTRODUCTION
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`Pursuant to the Board’s Order on January 26, 2023, Sonos hereby submits
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`this opening brief “addressing what, if any, impact the certificate of correction has
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`on [the] Final Written Decision[s].” Paper 53.
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`The CoCs (CoCs) do not have retroactive effect on the Final Written
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`Decisions for three reasons. First, CoCs changing inventorship only retroactively
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`apply to cure invalidity under § 102(f), not to situations involving antedating prior
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`art applied under 35 U.S.C. § 102(a), (b), (e), or § 103(a). Second, principles of
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`judicial estoppel and waiver prevent reconsideration of the Final Written Decisions
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`because the Board and Sonos proceeded with the case under Implicit’s original
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`inventorship position, and Implicit waived any argument that Carpenter is an
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`inventor. Third, even if the Board considers the CoCs, the outcome of the Final
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`Written Decisions would not change because Implicit’s swear-behind is
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`unsupported by the record evidence regardless of inventorship. Fourth, altering the
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`Final Written Decisions without permitting Sonos a chance to develop factual
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`support and substantive arguments rebutting Implicit’s new inventorship theory
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`would violate Due Process and the Administrative Procedure Act (APA).
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`I.
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`THE CERTIFICATES OF CORRECTION DO NOT CURE
`INVALIDITY DECIDED IN THESE FINAL WRITTEN DECISIONS
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`The CoCs do not operate to cure the invalidity issues decided in the Final
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`Written Decisions because neither 35 U.S.C. § 256 (which governs correction of
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`1
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`inventorship), nor Implicit’s caselaw permits this.
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`A. The Certificates of Correction do not Impact Invalidity Arising
`Under 35 U.S.C. §§ 102(a), (b), and (e) and 103(a) Decided in the
`Final Written Decisions
`Implicit’s argument that the post-Final Written Decision CoCs, which
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`change inventorship, negate the Final Written Decisions at this stage of the
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`proceedings is misplaced. A CoC changing inventorship cannot be used to cure a
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`finding of invalidity under 35 U.S.C. §§ 102(a), (b), and (e), or 103(a), as was the
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`case in the Final Written Decisions. 35 U.S.C. § 256(b) governs correction of
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`inventorship and states:
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`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(b). In other words, the statue specifies that correcting
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`inventorship can overcome invalidity if the invalidity arises from the act of
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`misnaming inventors. The act of misnaming inventors invalidates a patent under
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`pre-AIA § 102(f)1. The statute does not provide that correcting inventorship will
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`1 “A person shall be entitled to a patent unless — . . . (f) he did not himself invent
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`the subject matter sought to be patented.” Pre-AIA 35 U.S.C. § 102(f); In re
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`VerHoef, 888 F.3d 1362, 1365 (Fed. Cir. 2018) (“[§ 102(f)] requires that a patent
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`accurately name the correct inventors of a claimed invention.”).
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`2
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`affect other types of invalidity, such as invalidity premised on grounds of
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`anticipation and/or obviousness under §§ 102(a), (b), (e) or 103(a). Nor does the
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`statute provide that attempts to antedate prior art applied under §§ 102(a), (b), (e)
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`or 103(a) can be reargued upon a change of inventorship.
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`Here, Implicit’s attempt to cure prior-art invalidity with a CoC changing
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`inventorship fails for at least the reason that it goes beyond the plain language of
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`the inventorship correction statute. Implicit misreads § 256’s invalidity-savings
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`provision as granting it the right to use changed inventorship to retroactively
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`address any type of invalidity. The language of § 256 does not provide for this and
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`thus does not provide a basis for revisiting the Final Written Decisions in view of
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`the CoCs changing inventorship.
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`B.
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`Implicit’s Caselaw Does Not Support Revisiting the Final Written
`Decisions in View of the Certificates of Correction
`None of Implicit’s caselaw permits the Board to revisit the Final Written
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`Decisions. Such cases deal with requests to address invalidity under § 102(f) or
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`with changed priority claims or terminal disclaimers.
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`For example, Implicit has relied primarily on Egenera, Inc. v. Cisco Sys.,
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`Inc., 972 F.3d 1367 (Fed. Cir. 2020), in which the alleged infringer raised improper
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`inventorship under § 102(f) as an invalidity defense at the trial court level and the
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`trial court held a bench trial on inventorship. Id. at 1372. After the trial court
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`determined that a third party was an actual inventor, the trial court refused to allow
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`3
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`the patentee to correct inventorship under § 256 to address the § 102(f) invalidity.
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`Id. The Federal Circuit held that the refusal to allow correction under § 256 was
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`error. Id. This case is inapposite for two reasons.
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`First, Implicit is not seeking to address § 102(f) invalidity, as in Egenera.
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`Rather, Implicit is seeking a post-Final Written Decision change in inventorship as
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`an end-run around the Board’s conclusions in the Final Written Decisions, which
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`ultimately turned on anticipation and obviousness. See, e.g., Paper 40, p. 53.
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`Second, unlike in Egenera, inventorship of Implicit’s patent was not at issue
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`in the IPR proceedings. Indeed, the Board did not conclude, and had no occasion
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`to conclude, that Carpenter was either a proper inventor or that he was improperly
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`omitted. Implicit never asserted during the IPR proceeding that there was an error
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`in inventorship. Quite the contrary, Implicit asserted that Carpenter was not an
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`inventor, and merely reduced to practice the invention of Balassanian and Bradley.
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`See Ex. 2001 (Balassanian Declaration) at ¶ 33; Paper 9 (POR) at 19-20; Ex. 1019
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`(Balassanian Dep. Tr.) at 59:9-18 (“Q. Did Guy Carpenter contribute to the
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`conception – to any conception of the claims? . . . [A.] I don't believe so.”).
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`Indeed, the position that Implicit seeks to advance is directly contrary to the
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`position Implicit took in the IPR proceedings. For these reasons, Egenera does not
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`support revisiting the Final Written Decisions in view of the CoCs.
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`Implicit’s other cases are easily distinguishable from the facts at hand,
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`4
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`and/or are irrelevant to the question of whether the CoCs impact the Final Written
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`Decisions. For example, in SIPCO, LLC v. Emerson Elec. Co., 2018-1364, Dkt. 29
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`(Fed. Cir. Jun. 27, 2018) the Federal Circuit granted a remand in view of an after-
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`filed certificate of correction that corrects a defective priority claim. SIPCO, 2018-
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`1364, Dkt. 29 at 2-4. But there, the patentee had made three attempts during the
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`IPR to make this correction and had argued at the tribunal below that the correction
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`would negate certain prior art. Id. at 2. Implicit never tried to change inventorship
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`during the IPR and in fact advanced a different, contradictory argument, which the
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`Board considered and found to be insufficiently supported. Whereas the
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`arguments and correction in SIPCO were made during the IPR and consistent
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`throughout, the Implicit seeks to change its arguments to those it never argued and
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`never attempted to correct until three years later. SIPCO does not support
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`revisiting the Final Written Decisions in view of the CoCs.
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`Similarly, Dunn does not support revisiting the Final Written Decisions. In
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`Dunn, the Court of Customs and Patent Appeals (CCPA) granted a remand to the
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`Agency to consider an after-filed terminal disclaimer. In re Dunn, 349 F.2d 433,
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`440 (C.C.P.A. 1965). The CCPA explained that it was doing so because the law
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`on terminal disclaimers was, at the time in 1965, unsettled. Id. (“Since the range
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`of types of situations in which terminal disclaimers can be effective to overcome
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`double patenting rejections based on obviousness is not yet settled, we think it
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`5
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`advisable to remand…”). But here, there is no unsettled law and terminal
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`disclaimers are not at issue. Dunn thus provides no support for Implicit’s position
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`that post-filed CoCs to change inventorship impact the invalidity findings set out in
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`the Final Written Decisions.
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`Implicit’s remaining cases are still further afield, dealing not with CoCs but
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`situations in which post-decision factual circumstances were found to justify
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`reconsideration. See In re Apple, 562 F. App’x 983 (Fed. Cir. 2014) (subsequent
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`claim construction); Home Prod. Int’l, Inc. v. United States, 633 F.3d 1369, 1381
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`(Fed. Cir. 2011) (material fraud committed); and Fairchild (Taiwan) Corp. v.
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`Power Integrations, Inc., 854 F.3d 1364, 1366 (Fed. Cir. 2017) (estoppel statute
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`triggered). None of these cases support the retroactive effect of a CoC.
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`II. DOCTRINES OF JUDICIAL ESTOPPEL AND WAIVER PRECLUDE
`THE CERTIFICATES OF CORRECTION FROM HAVING
`RETROACTIVE EFFECT ON THE FINAL WRITTEN DECISIONS
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`The CoCs should not be given any retroactive effect because Implicit is
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`estopped from arguing to the Board in this IPR that Carpenter is an inventor in
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`order to cure its prior attempt at antedating. Implicit has also waived the
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`opportunity to argue the Carpenter is an inventor by failing to timely raise this
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`argument when it had the chance during the proceeding.
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`A.
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`Judicial Estoppel Prevents the Certificates of Correction from
`Having Retroactive Effect on the Final Written Decisions
`Under Federal Circuit precedent, judicial estoppel applies to preclude a party
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`6
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`from advancing a position inconsistent with an earlier position advanced by the
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`party and accepted by the court. See Transclean Corp. v. Jiffy Lube Intern., Inc.,
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`474 F.3d 1298, 1307 (Fed. Cir. 2007). Courts apply judicial estoppel against a
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`party when: (1) the party takes a later position that is “clearly inconsistent” with an
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`earlier position; (2) the party must have succeeded in persuading a court to adopt
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`the earlier position (which thus poses a “risk of inconsistent court
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`determinations”); and (3) the party seeking to assert an inconsistent position would
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`derive an unfair advantage or impose an unfair detriment on the opposing party if
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`not estopped. Id. (citing New Hampshire v. Maine, 532 U.S. 742, 750-51 (2001)).
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`Each factor is satisfied here.
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`First, during the IPR proceedings, Implicit took the position that Balassanian
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`and Bradley were inventors and communicated the invention to Carpenter for his
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`subsequent reduction to practice. See Ex. 2001 (Balassanian Declaration) at ¶ 33;
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`Paper 9 (POR) at 19-20; Ex. 1019 (Balassanian Dep. Tr.) at 59:9-18 . Implicit now
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`takes the position that Carpenter was an inventor and seeks further consideration of
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`the merits of the case in view of this new position. This is inconsistent with the
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`position Implicit advanced during the proceeding.
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`Second, the Board accepted Implicit’s proposition that Balassanian and
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`Bradley were inventors and proceeded to decide the case accordingly. Implicit was
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`ultimately unsuccessful – but not because the Board rejected the proposition that
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`7
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`Balassanian and Bradley were the proper inventors. The Board accepted that
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`proposition but ruled against Implicit because Implicit’s evidence was insufficient.
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`For purposes of applying judicial estoppel in this case, it does not matter that
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`Implicit ultimately lost the IPR. What matters is that Implicit advanced a premise
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`during the IPR, the Board accepted the premise for purposes of making findings of
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`facts and rulings of law in the IPR, and now Implicit has decided to advance an
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`inconsistent premise and redo the IPR. Judicial estoppel can still apply even
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`where a party ultimately loses in advancing the earlier position. Transclean
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`demonstrates this. There, the patentee originally argued that customers of an
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`infringing manufacturer were in privity with the manufacturer. Id. at 1302. The
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`trial court accepted the patentee’s admission of privity but ruled against the
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`patentee. Id. at 1302, 1305-07. The patentee tried to repudiate the issue of privity,
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`but the Federal Circuit held the patentee to its earlier position under principles of
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`judicial estoppel – despite that the patentee was the losing party. Id. at 1307
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`(explaining that the patentee’s request for a determination that privity did not exist
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`for claim preclusion purposes was “clearly inconsistent with the position [the
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`patentee] advocated before the trial court.”).
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`Implicit finds itself in the same position. After an unsuccessful strategy in
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`the IPR proceedings (due to its own evidence failing to support its own position),
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`Implicit wishes to reverse course and have its evidence reconsidered in light of a
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`8
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`different position. Judicial estoppel prevents this. See id. The Supreme Court and
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`Federal Circuit clearly prohibit parties from changing arguments to suit the needs
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`of the moment. E.g., Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d
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`1323, 1345-46 (Fed. Cir. 2001).
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`Third, Implicit would derive an unfair advantage in this proceeding should
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`the Board decide to revisit the Final Written Decisions in view of Implicit’s
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`changed inventorship. Implicit is seeking to upset a final decision by this Board
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`concerning invalidity; by its very nature, this prejudices Sonos because Sonos
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`spent resources litigating this matter to resolution. Moreover, Sonos met Implicit’s
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`positions head on, developed its arguments and evidence in response, and took
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`positions in the proceeding as a result. Implicit seeks now to repudiate its earlier
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`positions and to negate a Board finding of invalidity in view of its new positions.
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`Doing so would deprive Sonos of the ability to respond and develop evidence
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`concerning the merits of Implicit’s swear-behind under Implicit’s new position and
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`would have preclusive effect on Sonos. For these reasons, revisiting the Final
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`Written Decisions in view of the CoCs would violate Due Process and the
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`Administrative Procedure Act (as set forth below in Section IV) and would thus
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`clearly prejudice Sonos.
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`B.
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`Implicit Waived the Opportunity to Argue that Carpenter is an
`Inventor
`Waiver provides an independent basis to conclude that the CoCs ought not
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`9
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`to upset the Final Written Decisions. In particular, Implicit waived the opportunity
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`to argue Carpenter was an inventor by not raising it when it had the chance during
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`the proceeding and, in fact, arguing the opposite – i.e., that Carpenter was not an
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`inventor and merely reduced the invention to practice.
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`Waiver is the intentional relinquishment of a known right. In re Google
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`Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (citing United States v.
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`Olano, 507 U.S. 725, 733 (1993)). It is a hallmark of practice before the PTAB
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`that the failure to raise an argument before the Board is a waiver of that argument.
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`E.g., VirnetX Inc. v. Apple Inc., 665 F. App’x 880, 884 (Fed. Cir. 2016) (“Because
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`VirnetX did not present these arguments to the PTAB, they are waived.”); Finjan,
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`Inc. v. Cisco Sys., Inc., 837 F. App’x 799, 811 (Fed. Cir. 2020).
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`During the IPR, Implicit’s argument was: Balassanian and Bradley
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`conceived and communicated the invention to Carpenter for reduction to practice.
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`Ex. 2001 (Balassanian Declaration) at ¶ 33; Paper 9 (POR) at 19-20; Ex. 1019
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`(Balassanian Dep. Tr.) at 59:9-18. Implicit was in possession of all the facts
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`concerning its alleged conception and reduction to practice. It submitted sworn
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`testimony from an inventor, dozens of exhibits in support of the alleged conception
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`and reduction to practice, and its counsel represented the relevant parties
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`(Balassanian and Carpenter). Thus, Implicit specifically chose the argument that
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`Balassanian and Bradley conceived and specifically declined to argue that
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`10
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`Balassanian, Bradley, and Carpenter conceived. Further, in 2018 after a review of
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`its own evidence, Implicit could have sought to change inventorship at that point if
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`it truly believed that Carpenter should have been named as an inventor. It
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`specifically chose not to do this and instead argued that Balassanian and Bradley
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`conceived and communicated the invention to Carpenter for reduction to practice.
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`Accordingly, Implicit has waived its opportunity to argue that Carpenter is
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`an inventor. See VirnetX, 665 F. App’x at 884. Because Implicit waived the
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`opportunity to assert Carpenter’s newly alleged status as an inventor, Implicit is
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`not permitted to do so now and the CoCs ought not to have any effect on the Final
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`Written Decisions.
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`III. EVEN IF THE BOARD CONSIDERS THE CERTIFICATES OF
`CORRECTION, THEY WOULD NOT CHANGE THE ULTIMATE
`RESULT OF THE FINAL WRITTEN DECISIONS
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`Even if the Board is inclined to revisit the Final Written Decisions in view of
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`the CoCs to change inventorship (despite the reasons to the contrary, above), the
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`outcome of the Final Written Decisions should not change because independent
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`reasons support that Implicit’s swear-behind should fail.
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`A. Certificates of Correction Can Be Entered on Invalid Patents
`Without Affecting Invalidity
`As an initial matter, when considering whether to revisit the Final Written
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`Decisions in view of the CoCs, the Board should not give any weight to the mere
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`fact that the Director issued the CoCs after the Final Written Decisions. In other
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`11
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`words, the mere issuance of the CoCs should not be treated as an adoption that
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`they should have any effect on the Final Written Decisions. CoCs can be entered
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`without regard to underlying validity or invalidity of the patents in question. E.g.,
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`Frank's Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., 292 F.3d 1363,
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`1377 (Fed. Cir. 2002) (“Nothing in the statute governing a court’s power to correct
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`inventorship, 35 U.S.C. § 256, however, prevents a court from correcting the
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`inventorship of an unenforceable patent.”); Heat Techs., Inc. v. Papierfabrik Aug.
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`Koehler Se, 2019 WL 3430477 at 2 (Fed. Cir. July 18, 2019) (“We see no error in
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`the district court’s conclusion that a § 256 claim for correction of inventorship can
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`proceed not-withstanding other potential challenges to the patents [validity]. . . .”).
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`Thus, entry of the CoCs does not compel reconsideration of prior findings of
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`invalidity.2
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`B.
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`The Board Would Be Required to Consider The Old Evidence
`Again Under Implicit’s New Inventorship Theory
`Sonos is mindful of the Board’s instruction “not [to] address the substantive
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`2 To the extent Implicit argues that there was no point to entering the Certificates
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`of Correction other than to apply after reconsideration of the Final Written
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`Decisions – this is not true for at least the reason that the Certificates of Correction
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`would apply to the non-challenged claims, which have not been held invalid.
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`12
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`merits relating to antedating . . .” Paper 53. Without addressing the substantive
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`merits, Sonos notes only that, as a procedural matter, the Board cannot revisit the
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`Final Written Decisions, and in particular, its ruling on whether or not Implicit
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`established that it antedated the asserted art, without undertaking an additional
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`analysis of the record evidence in view of Implicit’s new inventorship position. To
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`the extent that the Board is inclined to do that (despite the reasons to the contrary
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`above), Sonos requests an opportunity to brief the merits of the antedating
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`evidence in view of Implicit’s new theory.
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`Moreover, as a further procedural matter, Sonos submits that even if the
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`Board concluded that the Certifications of Correction ought to operate to nullify
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`the inurement issue, Sonos submits that it presented additional reasons why
`
`antedating fails that were independent of inventorship. In this respect, for any one
`
`or more of these additional reasons, consideration of the CoCs would not operate
`
`to change the outcome of the Final Written Decisions.3
`
`
`3 Sonos has refrained from arguing these additional reasons in view of the Board’s
`
`order “not [to] address the substantive merits relating to antedating . . .” Paper 53.
`
`However, if the Board prefers, Sonos would welcome the opportunity to explain
`
`why these additional reasons compel the same result notwithstanding inventorship.
`
`13
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`
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`IV. REVERSING THE INVALIDITY DETERMINED IN THE FINAL
`WRITTEN DECISIONS WOULD VIOLATE THE
`ADMINISTRATIVE PROCEDURE ACT AND DUE PROCESS
`
`
`
`
`
`To the extent the Board considers the CoCs to have some kind of retroactive
`
`effect on the Final Written Decisions, Sonos submits that the Board must provide
`
`Sonos with notice and an opportunity to substantively respond to the merits of
`
`antedating the asserted prior art under Implicit’s new inventorship theory in order
`
`to comply with Due Process and the Administrative Procedure Act (APA). See,
`
`e.g., Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016); Qualcomm
`
`Inc. V. Intel Corp, 6 F.4th 1256 (Fed. Cir. 2021).
`
`The APA requires the Agency to provide “all interested parties opportunity
`
`for the submission and consideration of facts [and] arguments . . . [and a] hearing
`
`and decision on notice.” 5 U.S.C. § 554(c). The Agency must also allow “a party .
`
`. . to submit rebuttal evidence . . . as may be required for a full . . . disclosure of the
`
`facts.” Id. § 556(d).
`
`In Dell, the Federal Circuit found that the Board denied a party’s procedural
`
`rights guaranteed by the APA when the Board “rel[ied] in its decision on a factual
`
`assertion introduced into the proceeding only at oral argument, after [patent owner]
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`could meaningfully respond.” Dell Inc., 818 F.3d at 1301. Similarly, in
`
`Qualcomm, the Board in the final decision adopted a construction for a claim term
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`that diverged from a construction agreed upon by both parties. Qualcomm, 6 F.4th
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`14
`
`
`
`
`
`at 1263. The Federal Circuit held that the Board violated patent owner’s
`
`
`
`
`
`procedural rights because it failed to provide notice of, and opportunity to respond
`
`to, the construction adopted by the Board. Id. at 1263.
`
`Here, permitting the CoCs to negate the Final Written Decisions would
`
`similarly deny Sonos procedural rights under the APA and Due Process. Like the
`
`situations in Dell and Qualcomm, Sonos would be denied the opportunity to
`
`respond to Implicit’s new theory of inventorship by, for example, developing facts
`
`and argument in rebuttal. Thus, revisiting the Final Written Decisions in view of
`
`the CoCs without providing Sonos with notice and an opportunity to substantively
`
`respond to the merits of antedating the asserted prior art under Implicit’s new
`
`inventorship theory would deny Sonos its rights under Due Process of law and
`
`thereby violate the APA.
`
`V. CONCLUSION
`
`For any one or more of the forgoing reasons, the Board should decline to
`
`revisit the Final Written Decisions in view of the CoCs and should issue an order
`
`reiterating the finality of the Final Written Decisions.
`
`
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`15
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`Respectfully submitted,
`
`Date: February 10, 2023
`
`
`
`By: /Cole B. Richter/
`
`
`
`Rory P. Shea
`George I. Lee
`Sean M. Sullivan
`Cole B. Richter
`LEE SULLIVAN SHEA & SMITH LLP
`656 West Randolph, Suite 5W
`Chicago, Illinois 60661
`Tel.: (312) 754-9602
`Attorneys for Appellee, Sonos, Inc.
`
`
`
`
`
`16
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`
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`CERTIFICATE OF SERVICE
`
`In accordance with 37 CFR §42.6(e)(4), I hereby certify that on February 10,
`
`2023 a true copy of the foregoing BRIEF, was served via electronic mail to the
`
`following counsel at the addresses designated for service by Patent Owner:
`
`Timothy McAnulty
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`1875 Explorer Street, Suite 800
`Reston, Va 20190-6023
`Timothy.McAnulty@finnegan.com
`Back-up Counsel
`
`Christian Hurt
`THE DAVIS FIRM, PC
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`churt@bdavisfirm.com
`sue@davisfirm.com
`Lead Counsel
`
`
`
`
`
`
`/Cole B. Richter/
`Cole B. Richter (USPTO Reg. No. 65,398)
`LEE SULLIVAN SHEA & SMITH LLP
`656 West Randolph Street, Floor 5W
`Chicago, Illinois 60661
`Tel: (312) 754-9602
`Fax: (312) 754-9603
`richter@ls3ip.com
`
`Date: February 10, 2023
`
`
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`
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`17
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`
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