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`Paper No. 59__
`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 RESPONSE TO
`PATENT OWNER’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 .................................................................................... ii
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`INTRODUCTION ..................................................................................................... 1
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`I.
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`IMPLICIT’S CASELAW DOES NOT SUPPORT REVISITING THE
`FINAL WRITTEN DECISIONS..................................................................... 2
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`A.
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`B.
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`Roche Does Not Apply to Corrections Beyond § 102(f) ...................... 3
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`Southwest and SIPCO Do Not Support Implicit’s Reading .................. 4
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`II.
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`THE PUBLIC POLICY INTERESTS IDENTIFIED BY IMPLICIT
`DO NOT SUPPORT RETROACTIVE EFFECT ON THESE FINAL
`WRITTEN DECISIONS ................................................................................. 5
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`A.
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`B.
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`C.
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`The Public Interest in Naming Inventors Correctly Does Not
`Outweigh the Public’s Interest in Case Finality and Fairness .............. 5
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`Public Policy Dictates That Implicit’s Request Be Denied .................. 6
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`Implicit’s Inventorship Correction Was Not Informed by the
`Board’s Findings ................................................................................... 6
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`III. CONCLUSION ................................................................................................ 7
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`i
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`CASES
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`TABLE OF AUTHORITIES
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`Egenera, Inc. v. Cisco Systems, Inc.,
`972 F.3d 1367 (Fed. Cir. 2020) ............................................................................ 7
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`Emerson Elec. Co. v. SIPCO, LLC,
`IPR2016-00984 (P.T.A.B. Jan. 24, 2020) ............................................................ 5
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`Heat Techs., Inc. v. Papierfabrik Aug. Koehler SE,
`2019 WL 1915620 (N.D. Ga. Jan. 3, 2019) .......................................................... 4
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`Interactive Gift Exp., Inc. v. Compuserve Inc.,
`256 F.3d 1323 (Fed. Cir. 2001) ............................................................................ 6
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`Lizut v. Department of Army,
`717 F.2d 1391 (Fed. Cir. 1983) ............................................................................ 6
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`New Hampshire v. Maine,
`532 U.S. 742 (2001) .............................................................................................. 6
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`Roche Palo Alto LLC v. Ranbaxy Lab'ys Ltd.,
`551 F. Supp. 2d 349 (D.N.J. 2008) ....................................................................... 3
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`Southwest Software, Inc. v. Harlequin Inc.,
`226 F.3d 1280 (Fed. Cir. 2000) ........................................................................3, 4
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`ii
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`INTRODUCTION
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`Implicit’s post-Final Written Decision change in inventorship does not undo
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`the invalidity decided in these Final Written Decisions because § 256 limits
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`retroactive validity applications to scenarios of misjoinder or nonjoinder under §
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`102(f). The Board did not hold the challenged claims invalid under § 102(f) and
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`thus § 256 does not apply to undo The Board’s invalidity finding here. Principles
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`of waiver and judicial estoppel, as outlined in Sonos’s opening brief, support this
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`notion as it has long been a hallmark of the American Judicial system that parties
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`cannot return to tribunals and reopen decisions by advancing new arguments or
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`changing certain facts. Setting these dispositive aspects aside, even were the
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`Board to consider the changed inventorship, the result will ultimately be the same
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`because there are other reasons independent of inventorship why the swear-behind
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`attempt fails. Undoing the invalidity decisions at this stage, based on activity
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`occurring years after the issuance of the Final Written Decisions, would also
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`violate Due Process and the APA, capping off why changed inventorship does not
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`resurrect the invalid claims here.
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`Implicit advances two unpersuasive arguments in its opening brief. First,
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`Implicit argues that § 256 can apply retroactively, compared to §§ 254 and 255,
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`which apply prospectively. But this does not get Implicit the relief it asks for. The
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`question is not whether § 256 applies retroactively in some scenarios, the question
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`1
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`is “does it apply retroactively in this scenario?” Where misjoinder or nonjoinder
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`were not at issue in the IPRs, the statute and caselaw are clear that Implicit cannot
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`use § 256 as a get-out-of-jail free card for other types of invalidity. It makes sense
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`why § 256 applies retroactively only for cases of misjoinder or nonjoinder because
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`with misjoinder or nonjoinder the correction completely removes the basis for
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`invalidity. In cases with other types of invalidity, like ours, correction does not
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`remove the basis for invalidity – it has no direct effect on the §§ 102, 103
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`invalidity grounds here, and there remains independent reasons why Implicit’s
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`swear-behind fails. Second, Implicit argues that public policy supports correction
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`because it rewards the actual inventors. But public policy supports the principles
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`of finality, waiver, and judicial estoppel as well. Allowing Implicit to resurrect its
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`challenged claims by changing inventorship after issuance of the Final Written
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`Decisions would encourage parties to play a wait-and-see game with swear-
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`behinds, molding inventorship after the fact to whatever inventive entity fits their
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`evidence. Such gamesmanship should not be rewarded.
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`I.
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`IMPLICIT’S CASELAW DOES NOT SUPPORT REVISITING THE
`FINAL WRITTEN DECISIONS
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`Sonos’s opening brief demonstrated why § 256 retroactively applies to cure
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`§102(f) invalidity but does not apply to cure other types of invalidity. Implicit’s
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`brief fails to cite any authority permitting the type of retroactive application of §
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`256 Implicit asks for. Instead, Implicit attempts to show that § 256 applies
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`2
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`retroactively for some situation by comparing it to §§ 254 and 255, which govern
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`other corrections. But the dispute was never whether § 256 applies retroactively in
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`some situations, but rather whether § 256 applies in Implicit’s situation. Implicit
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`relies on Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir.
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`2000), and Roche Palo Alto LLC v. Ranbaxy Lab'ys Ltd., 551 F. Supp. 2d 349
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`(D.N.J. 2008). Neither supports Implicit’s reading of § 256.
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`A. Roche Does Not Apply to Corrections Beyond § 102(f)
`In Roche, the District of New Jersey considered the application of § 256 to a
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`nonjoinder situation. The patent in question issued naming only three of the five
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`actual inventors, notwithstanding the patentee’s efforts to correct the nonjoinder
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`prior to issuance of the patent. Roche, 551 F.Supp.2d at 351. Despite multiple
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`attempts by the patentee to correct inventorship, it was not until after institution of
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`an infringement suit that the USPTO issued a certificate of correction remedying
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`the nonjoinder. Id. at 352. While it was unclear from the record whether the
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`USPTO issued the certificate of correction pursuant to § 254 or § 256, the court
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`held that correction of inventorship to cure invalidity resulting from nonjoinder
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`(i.e., invalidity predicated on § 102(f)) is entitled to retroactive effect, regardless of
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`the specific section under which the correction issued. Id. at 358.
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`This case does not involve non-joinder or misjoinder. Implicit has changed
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`the inventorship under § 256 as a self-help attempt to make a new swear-behind
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`3
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`argument to antedate established §§ 102 and 103 prior art. This is not within the
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`scope of § 256 and is not provided for under Roche. Indeed, it makes sense why §
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`256 applies retroactively to cure invalidity under § 102(f) but not invalidity under
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`the other provisions. This is because with § 102(f), the correction will completely
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`remove the basis for invalidity. With other provisions, like §§ 102 or 103,
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`correction does not remove the basis for invalidity. Even in cases of a swear
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`behind, the Board will still need to consider the swear behind evidence under the
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`new inventorship as well as Sonos’s other reasons why the swear-behind fails. In
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`this way, Roche does not support Implicit’s reading of § 256. See also Heat
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`Techs., Inc. v. Papierfabrik Aug. Koehler SE, 2019 WL 1915620 (N.D. Ga. Jan. 3,
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`2019), amended, 2019 WL 1923663 (N.D. Ga. Apr. 18, 2019) (Section 256
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`“merely states that correcting inventorship will save a patent’s validity for that
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`reason—i.e., for failing to list all inventors.”).
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`B. Southwest and SIPCO Do Not Support Implicit’s Reading
`Southwest did not consider § 256 and does not provide authority for
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`Implicit’s reading of that statute. Instead, Implicit relies on Southwest to illustrate
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`the prospective operation of § 254, which is not at issue here. Paper 55, 7. In
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`Southwest, the patent in question issued without material needed for the Best Mode
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`and Enablement requirements of § 112. Southwest, 226 F.3d at 1297. The Federal
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`Circuit held that a certificate of correction issued under § 254 is only effective “for
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`4
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`causes of action arising after [the certificate of correction] was issued.” Id. at
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`1294-96. As noted above, Southwest includes no discussion of § 256 and does not
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`provide direct support for Implicit’s reading of § 256.
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`SIPCO is inapposite as well for the reasons discussed in Sonos’s Opening
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`Brief. Like Southwest, SIPCO’s holding does not support the proposition that
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`corrections under § 256 have retroactive effect for every possible scenario.
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`Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984, Paper 52 at 17-21 (P.T.A.B.
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`Jan. 24, 2020) (on remand). Rather, SIPCO’s discussion of § 256 was dicta,
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`merely highlighting the nonretroactivity of § 255 by comparing it to a statue with
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`some retroactive effect.
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`II. THE PUBLIC POLICY INTERESTS IDENTIFIED BY IMPLICIT DO
`NOT SUPPORT RETROACTIVE EFFECT ON THESE FINAL
`WRITTEN DECISIONS
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`A. The Public Interest in Naming Inventors Correctly Does Not
`Outweigh the Public’s Interest in Case Finality and Fairness
`In Patent Owner’s Opening Brief, Implicit argues that retroactive application
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`of § 256 will “reward actual inventors” and is thus consistent with public policy
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`rationales. But the Certificates of Correction can be entered without disturbing the
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`Final Written Decisions, still fulfilling the public policy rationale of § 256.
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`Further, it is in the public interest to uphold the Board’s carefully considered Final
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`Written Decisions because this promotes public trust in the judicial system. This is
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`the reason courts apply the doctrines of judicial estoppel and waiver discussed in
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`5
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`Sonos’s Opening Brief. See, e.g., New Hampshire v. Maine, 532 U.S. 742, 750-51
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`(2001) (judicial estoppel serves to maintain integrity of and public trust in the
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`judicial system). For the reasons discussed in Sonos’s Opening Brief, these
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`doctrines preclude Implicit from using the Certificates of Correction to circumvent
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`the Final Written Decisions of the Board.
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`Public Policy Dictates That Implicit’s Request Be Denied
`B.
`Even if the Board had discretion to consider the changed inventorship for the
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`Final Written Decisions in contravention of § 256, judicial estoppel, waiver, and
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`Due Process and APA concerns, public policy suggests that the Board refuse this
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`invitation. Doing so would discourage parties from seeking any type of correction
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`at all during an IPR, knowing that they can seek correction after the IPR is over
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`and get another bite at the apple if and only if they lose the first IPR. This would
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`amount to a severe drain on the Board’s and the parties’ resources and contravenes
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`settled judicial principals of finality. Lizut v. Department of Army, 717 F.2d 1391,
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`1396 (Fed.Cir.1983) (“Allowing a party to withhold important issues from the
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`[agency] and later present them to this court would undermine the [agency’s]
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`authority.”); Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1346
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`(Fed. Cir. 2001) (“[A] party’s argument should not be a moving target.”).
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`C.
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`Implicit’s Inventorship Correction Was Not Informed by the
`Board’s Findings
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`6
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`Implicit relies on Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367 (Fed.
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`Cir. 2020) to justify its post-decision attempt to negate the Final Written Decisions
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`by changing inventorship. Paper 55, 11. In particular, Implicit raises Egenera’s
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`discussion of how the inventorship analysis can be “informed by a tribunal’s view
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`of the evidence” as justification for its changing positions. Id. at p. 12. But
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`Implicit cannot demonstrate that its decision to pursue an inventorship change was
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`“informed” by the Board’s “view of the evidence” regarding inventorship because
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`inventorship was not at issue before the Board. At issue was whether Implicit’s
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`evidence corroborated Implicit’s story that Balassanian and Bradley conceived the
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`invention and communicated it to Carpenter for reduction to practice. The Board
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`had no occasion to decide whether Carpenter was or was not a proper inventor.
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`Simply put, there was no indication during the IPR that the original inventorship
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`advanced by Implicit was incorrect. To the contrary, Implicit advanced the
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`original inventorship, which was accepted and relied on by the Board and by
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`Sonos. Only after the Board issued the Final Written Decisions did Implicit seek
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`to effect a change in inventorship, and did so in direct contradiction to its own
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`evidence proffered to the Board. For these reasons, Egenera is inapposite.
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`III. CONCLUSION
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`For any one or more of the forgoing reasons, the Board should decline to
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`revisit the Final Written Decisions in view of the Certificates of Correction.
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`7
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`Respectfully submitted,
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`Date: March 1, 2023
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`By: /Cole B. Richter/
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`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 Petitioner, Sonos, Inc.
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`8
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`CERTIFICATE OF SERVICE
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`In accordance with 37 CFR §42.6(e)(4), I hereby certify that on March 1,
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`2023 a true copy of the foregoing BRIEF, was served via electronic mail to the
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`following counsel at the addresses designated for service by Patent Owner:
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`Timothy McAnulty
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`1875 Explorer Street, Suite 800
`Reston, Va 20190-6023
`Timothy.McAnulty@finnegan.com
`Back-up Counsel
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`Christian Hurt
`THE DAVIS FIRM, PC
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`churt@bdavisfirm.com
`sue@davisfirm.com
`Lead Counsel
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`/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
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`Date: March 1, 2023
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`9
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