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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 REPLY BRIEF
`PURSUANT TO REMAND FROM THE UNITED STATES
`COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`Case IPR2018-00767
`Patent No. 8,942,252
`
`Table of Contents
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`I.
`II.
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`Page
`Section 256 corrections apply retroactively in this case ................................. 1
`Sonos’s waiver and estoppel arguments are unavailing .................................. 4
`A. Waiver does not apply ........................................................................... 4
`B.
`Judicial estoppel does not apply ............................................................ 5
`III. Conclusion ....................................................................................................... 7
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`i
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`I.
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`Case IPR2018-00767
`Patent No. 8,942,252
`Section 256 corrections apply retroactively in this case
`Sonos now correctly acknowledges that duly-issued certificates of correction
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`under 35 U.S.C. § 256 have retroactive effect. Sonos Op. Br. 1. But without
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`citation, Sonos incorrectly attempts to limit the reach of the statute: “[Certificates
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`of Corrections] changing inventorship only retroactively apply to cure invalidity
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`under § 102(f), not to situations involving antedating prior art applied under 35
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`U.S.C. § 102(a), (b), (e), or § 103(a).” Id. Not so. Numerous cases discuss the
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`retroactive effect of inventorship corrections beyond § 102(f).
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`For example, the Board has concluded that: “[C]ertificates issued under this
`
`section have retroactive effect in general . . . . Our interpretation of § 256 as
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`having retroactive effect is consistent with the Federal Circuit’s decision in
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`Viskase.” Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984, Paper 52 at 17-21
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`(P.T.A.B. Jan. 24, 2020) (emphasis added). In Viskase Corp. v. Am. Nat’l Can Co.,
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`the Federal Circuit, in the context of a prior art challenge, announced that § 256
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`applies retroactivity—“the correction of inventorship does not affect the validity or
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`enforceability of the patent for the period before the correction.” 261 F.3d 1316,
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`1327-29 (Fed. Cir. 2001) (emphasis added, addressing pre-AIA § 102(e) prior art).
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`This belies Sonos’s pinched “102(f)-only” reading of this provision.
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`On Viskase’s facts, the examiner rejected the claims of the patent-at-issue by
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`citing as prior art a patent from an earlier-filed family. Id. Although the patent
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`1
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`Case IPR2018-00767
`Patent No. 8,942,252
`families were commonly owned, the inventive entities differed, so Viskase sought
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`to correct inventorship for the second family to name the same four inventors and
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`the Director issued the certificates. Id. The trial court held the patent-at-issue valid
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`and the jury found it infringed. Id. ANC sought reconsideration and separately
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`argued that the second family patents “were invalid for the period of incorrect
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`inventorship.” On appeal, the Federal Circuit found no error because the § 256
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`inventorship correction certificates were deemed to have retroactive effect, i.e.,
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`covering “the period before the correction.” Id.
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`The Federal Circuit’s instructive precedential cases at Riverwood Int’l Corp.
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`v. R.A. Jones & Co., 324 F.3d 1346 (Fed. Cir. 2003) and Google LLC v. IPA Techs,
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`Inc., 34 F.4th 1081 (Fed. Cir. 2022), further undermine Sonos’s argument. In
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`Riverwood, the court assessed § 103 and “Jones’ alternative argument that the ’806
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`patent is prior art under 35 U.S.C. § 102(e).” 324 F.3d at 1355. Riverwood asked
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`the district court to correct inventorship pursuant to § 256, but it refused. Id. at
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`1356. On appeal the Federal Circuit held that:
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`[I]f Riverwood sustains its burden of proof that Ziegler is
`the sole inventor of the ’361 patent, then the ’806 patent
`would not be prior art to the ’361 patent, and the district
`court should order correction of the inventorship of that
`patent. See 35 U.S.C. § 256. Because it is undisputed that
`Jones’ obviousness arguments relied extensively on the
`’806 patent as the invalidating prior art reference, we
`vacate the judgment of invalidity and remand the
`obviousness issue . . . .
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`2
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`Case IPR2018-00767
`Patent No. 8,942,252
`Id. at 1356. In the matter sub judice, Implicit has already prevailed on its petitions
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`pursuant to § 256. If the mere prospect of inventorship correction was enough to
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`require vacatur and reconsideration of invalidity in Riverwood, it is even more apt
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`here. See id. And in Google LLC, the Federal Circuit recently noted in another
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`obviousness analysis with § 102(a) prior art that if the patentee, IPA, had sought
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`certificates adding Dr. Moran as an inventor on the asserted patent, then it might
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`have been corrected under § 256 to overcome the invalidating prior art. 34 F.4th at
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`1088 (stating that “IPA cannot raise this argument as a defense without actually
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`seeking correction of inventorship of the patents, which it has not”) (citations
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`omitted); see also id. at n.6 (noting that the MPEP “similarly advises that a pre-
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`AIA 35 U.S.C. § 102(a) rejection can be overcome ‘by adding the coauthors as
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`inventors to the application’ assuming the statutory requirements are met”).
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`Section 256 is thus not limited to validity challenges under § 102(f) alone.
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`Contra Sonos Op. Br. 1-6. To be sure, § 102(f) challenges in district court are most
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`common, see, e.g., Roche Palo Alto LLC v. Ranbaxy Labs. Ltd., 551 F. Supp. 2d
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`349, 359 (D.N.J. 2008) (“correction of inventorship has retroactive effect”), but no
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`law is cited by Sonos that expressly or impliedly limits the statute or its retroactive
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`effect to that situation only. Sonos’s assertions notwithstanding, id. at 2, the plain
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`language of § 256 is agnostic as to any specific sub-section of patentability—it
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`does not mention § 102(f) explicitly, nor §§ 102(a), (b), (e), or 103(a), either.
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`3
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`Case IPR2018-00767
`Patent No. 8,942,252
`Sonos also argues that “certificates of correction can be entered on invalid
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`
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`patents without affecting invalidity,” and that “entry of the CoCs does not compel
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`reconsideration of prior findings of invalidity.” Id. at 11-12. But this would invert
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`the court’s retroactive teachings and the purpose of the statute—liberal correction
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`to benefit actual inventors. See Implicit Op. Br. 6-11. Sonos’s first cited case for
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`this erroneous proposition, Frank’s Casing Crew v. PMR Techs., is irrelevant
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`because it deals with patents tainted by inequitable conduct, which is absent from
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`the ambit of § 256 and inapplicable here. 292 F.3d 1363, 1377 (Fed. Cir. 2002).
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`And Heat Techs., Inc. v. Papierfabrik Koehler actually supports Implicit’s
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`position—the court acknowledged the right to seek § 256 correction even if the
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`correction itself ultimately leads to an invalidity determination. 2019 WL
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`34304477 at 2-3 (Fed. Cir. July 18, 2019). That is not the case here where
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`inventorship is corrected and directly affects the claims.
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`II.
`
`Sonos’s waiver and estoppel arguments are unavailing
`A. Waiver does not apply
`Sonos includes the same waiver arguments presented on appeal to oppose
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`Implicit’s motion for remand. See Implicit, LLC v. Sonos, Inc., Nos. 20-1173,
`
`-1174, D.I. 82 at 2-4 (Fed. Cir. Aug. 24, 2022). The court did not deem this a
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`situation where waiver applied and remanded for a substantive assessment in view
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`of the corrected inventive entity.
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`4
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`Case IPR2018-00767
`Patent No. 8,942,252
`Nonetheless, Sonos’s arguments fail in view of Egenera, Inc. v. Cisco Sys.,
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`Inc., 972 F.3d 1367 (Fed. Cir. 2020). Implicit Op. Br. 12-15. It does not matter that
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`“Implicit never tried to change inventorship during the IPR” or that it “fail[ed] to
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`timely raise this argument when it had the chance during the proceeding.” Sonos
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`Op. Br. 5-6. Implicit was permitted to seek inventorship corrections when it did.
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`The Board’s conclusions “illuminated Mr. [Carpenter]’s necessary presence as an
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`inventor,” and timely led to correction petitions. See Egenera, 972 F.3d at 1378.
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`Section 256 is not time-bound and was brought to bear before these proceedings
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`were substantively reviewed on appeal. At most, Sonos’s cited cases stand for the
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`uncontroversial proposition that waived arguments cannot be raised. But none deal
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`with the changed the circumstances brought about by the unique statutory rights
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`under § 256. A further Board determination is warranted to take stock of the
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`intervening change in the applicable legal context once Implicit’s correction
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`certificates issued. Cf. SKF USA Inc. v. U.S., 254 F.3d 1022, 1028 (Fed. Cir. 2001)
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`(“remand is generally required if the intervening event may affect the validity of
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`the agency action”).
`
`Judicial estoppel does not apply
`B.
`An error in inventorship “shall not invalidate the patent” when, as here, the
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`error was corrected. Judicial estoppel—as an equitable doctrine—cannot override a
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`curative statute like § 256. The legislative intent was to permit liberal correction of
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`5
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`Case IPR2018-00767
`Patent No. 8,942,252
`inventorship where possible, to avoid invalidation and forfeiture of rights. Implicit
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`Op. Br. 7-11. And § 256 contains no hint of an exception for judicial estoppel, a
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`common-law notion. In fact, every petitioner seeking a change under § 256 has
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`necessarily pursued some other inventorship theory before the agency previously.
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`Sonos’s extreme position here would significantly curtail this “savings provision.”
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`Moreover, § 256 encourages parties to enhance patent accuracy if an error is
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`determined; in order to avoid disincentivizing corrections, the statute should
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`remain free of the threat of judicial estoppel as a matter of law.
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`But even if judicial estoppel could apply in this context, it fails here. Sonos
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`contends under the first two prongs that “Implicit took the position that
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`Balassanian and Bradley were inventors,” and that “the Board accepted Implicit’s
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`proposition that Balasannian and Bradley were inventors,” Sonos Op. Br. 7-8, but
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`this is an artificially narrow characterization of the real positions. Implicit argued
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`that Balasannian and Bradley were inventors of valid claims because the work of
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`Mr. Carpenter inured to their benefit. Implicit Op. Br. 3-6. But the Board held that
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`the work of Mr. Carpenter did not inure to their benefit. Id. In no way did Implicit
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`“succeed in persuading” the Board of its position. Thus, there is no “risk of
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`inconsistent court determinations,” the rationale for applying judicial estoppel.
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`New Hampshire v. Maine, 532 U.S. 742, 750 (2001). Being legally wrong,
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`moreover, is not the same as changing factual positions. Cleveland Policy
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`6
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`
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`Case IPR2018-00767
`Patent No. 8,942,252
`Managem’t Sys., 526 U.S. 795, 802 (1999) (expressing doubt about use of judicial
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`estoppel when the alleged contradictory positions are not factual assertions, such as
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`“‘The light was red/green,’ or ‘I can/cannot raise my arm above my head.’”).
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`The final non-exclusive factor—whether there is an “unfair advantage”—
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`does not support judicial estoppel either. There is nothing “unfair” about Implicit
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`trying to swear behind references. After the Board made its determinations,
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`Implicit saw the need to correct inventorship in order to avoid future § 102(f)
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`assertions. There is nothing “unfair” about exercising a statutory right to correct
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`inventorship commensurate with Board factfinding. It was also foreseeable that in
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`arguing “no inurement,” Mr. Carpenter might seek to vindicate his inventor rights.
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`III. Conclusion
`Sonos also hints at other arguments it could make if the Board allowed
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`briefing on the substantive merits anew. Sonos Op. Br. 13-15, & n.3. These
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`arguments are too vague for a substantive response and are nevertheless not
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`appropriate now.
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`For the foregoing reasons, the Board should grant the relief requested by
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`Implicit.
`
`Date: March 1, 2023
`
`
`
`
` Respectfully submitted,
`
`
`
` /Timothy P. McAnulty/
`Timothy P. McAnulty, Reg. No. 56,939
`Counsel for Patent Owner Implicit, LLC
`
`
`7
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`
`
`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 REPLY BRIEF PURSUANT TO REMAND FROM THE
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`was served electronically via email on March 1, 2023, in its entirety on the
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`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: March 1, 2023
`
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