wos
`
`ec} ICITOR
`oct 19 2003
`Us PATENT aTAADENARKOFF
`
`(cE
`
`Paper No.
`Filed: October 10, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`
`Vv,
`
`IMPLICIT, LLC,
`Patent Owner.
`
`
`Case No. IPR2018-00767
`Patent No. 8,942,252
`
`
`PATENT OWNER’S SECOND AMENDED NOTICE OF APPEAL
`
`Pursuant to 35 U.S.C. §§ 141(c) and 319 and 37 C.F.R. §§ 90.2(a) and
`
`90.3(b)(1), and Implicit, LLC, v. Sonos, Inc., Case Nos. 2020-1173, -1174, Dkt. No.
`
`90 (Fed. Cir. Oct. 6, 2023), Patent Owner hereby provides its Notice that it appeals
`
`to the United States Court of Appeals for the Federal Circuit from the Final Written
`
`Decision entered September 16, 2019, (Paper 40), from the Final Written Decision
`
`on Remand entered on September 19, 2023 (Paper 60), and from all underlying
`
`
`
`ec} ICITOR
`oct 19 2003
`Us PATENT aTAADENARKOFF
`
`(cE
`
`Paper No.
`Filed: October 10, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`
`Vv,
`
`IMPLICIT, LLC,
`Patent Owner.
`
`
`Case No. IPR2018-00767
`Patent No. 8,942,252
`
`
`PATENT OWNER’S SECOND AMENDED NOTICE OF APPEAL
`
`Pursuant to 35 U.S.C. §§ 141(c) and 319 and 37 C.F.R. §§ 90.2(a) and
`
`90.3(b)(1), and Implicit, LLC, v. Sonos, Inc., Case Nos. 2020-1173, -1174, Dkt. No.
`
`90 (Fed. Cir. Oct. 6, 2023), Patent Owner hereby provides its Notice that it appeals
`
`to the United States Court of Appeals for the Federal Circuit from the Final Written
`
`Decision entered September 16, 2019, (Paper 40), from the Final Written Decision
`
`on Remand entered on September 19, 2023 (Paper 60), and from all underlying
`
`
`
`Case IPR2018-00767
`Patent No. 8,942,252
`orders, decisions, rulings, and opinions regarding U.S. Patent No. 8,942,252 B2
`
`(“the ’252 patent”) set forth in Inter Partes Review IPR2018-00767.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the issues on appeal include,
`
`but are not limited to:
`
`1.
`
`whether the Board erred when it found that claims 1-3, 8, 11, and 17 of the
`
`252 Patent were shownto be unpatentable under 35 U.S.C. § 103(a) as
`
`obvious in view of U.S. Patent No. 7,296,338 (“Janevski”) and Azevedol,
`
`Janevski and Mills2, Janevski and Berthaud?, and/or Janeveski and Eidson’;
`
`2.
`
`whetherthe Board erred whenit concluded that Janevskiis priorart to the
`
`°252 patent under 35 U.S.C. § 102.
`
`3.
`
`whether the Board erred whenit construed terms of the claims of the ’252
`
`patent;
`
`4,
`
`whetherthe Board erred in assessing the correction of inventorship
`
`certificate in “consider[ing] the impact of these intervening circumstances on
`
`the decisions on appealin the first instance,” and whetheror not it properly
`
`
`
`| Azevedo, Fault-Tolerant Clock Synchronizationfor Distributed Systems with
`High Message Delay Variation,EEE Workshop on Fault-Tolerance Par. and Dist.
`Syst., (1994) (“Azevedo”).
`* Mills, Network Time Protocol (Version 3) Specification, Implementation and
`Analysis, Network Working Group, University of Delaware (March 1992)
`(“Mills”).
`3 Jean-Marc Berthaud, Time Synchronization Over Networks Using Convex
`Closures, IEEE/ACM Transactions on Networking (Apr. 2000) (“Berthaud”).
`*U.S. Patent No. 6,278,710 (“Eidson”).
`
`
`
`Case IPR2018-00767
`Patent No. 8,942,252
`“issue[d] an order addressing what, if any, impact the certificates of
`
`correction would have onthe final written decisions in these cases.” Implicit,
`
`LLC, v. Sonos, Inc., Case Nos. 2020-1173, -1174, Dkt. No. 85 (Fed. Cir.
`
`Nov.9, 2022).
`
`whetherjudicial estoppel and waiver were proper grounds for the Board to
`
`rely on in response to the Court’s limited remand order and whether these
`
`doctrines were applied without error. See id
`
`whetherthe February 7, 2022 Order (Paper 47), issued by Commissioner for
`
`Patents, Andrew Hirshfeld, as the Official Performing the Functions and
`
`Duties of the Under Secretary of Commercefor Intellectual Property and
`
`Director of the United States Patent and Trademark Office, comports with
`
`the Supreme Court’s decision in United States v. Arthrex, Inc., 141 S. Ct.
`
`1970 (2021) or the Federal Vacancies Reform Act;
`
`whether Commissioner for Patents, Andrew Hirschfeld, as the Official
`
`Performing the Functions and Duties of the Under Secretary of Commerce
`
`for Intellectual Property and Director of the United States Patent and
`
`Trademark Office erred when denying Patent Owner’s Request for Director
`
`Review,including application of improper procedures;
`
`all other issues decided adversely to Patent Ownerin any order, decision,
`
`ruling or opinion underlying or supporting the Final Written Decision (Paper
`
`
`
`Case IPR2018-00767
`Patent No. 8,942,252
`40) or the Order Denying Patent Owner’s Request for Director Review
`
`(Paper 47), or the Final Written Decision on Remand entered on September
`
`19, 2023 (Paper 60), or any other order adversely affecting Patent Owner.
`
`Copies of the decisions being appealed are attached to this Notice.
`
`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being filed
`
`with the Director of the United States Patent and Trademark Office, and a copy of
`
`this Notice is being concurrently filed with the Patent Trial and Appeal Board. In
`
`addition, a copy of this Notice is being filed with the Clerk’s Office for the United
`
`States Court of Appeals for the Federal Circuit via CM/ECF.°
`
`Dated: October 10, 2023
`
`By:_/Timothy P. McAnulty/
`Timothy P. McAnulty (Back-up Counsel)
`Reg. No. 56,939
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`
`> Pursuant the United States Court of Appeals for the Federal Circuit Order dated
`
`February 28, 2022, “[nJo additional docketing fee is required for any amended
`
`notices of appeal in this matter.” Implicit, LLC, v. Sonos, Inc., Case Nos. 2020-
`
`1173, -1174, Dkt. No. 72 (Fed. Cir. Feb. 28, 2022); Implicit, LLC, v. Sonos, Inc.,
`
`Case Nos. 2020-1173, -1174, Dkt. No. 85 (Fed. Cir. Nov. 9, 2022) (“This court
`
`retains jurisdiction over the appeals.”).
`
`
`
`CERTIFICATE OF SERVICE AND FILING
`
`Case IPR2018-00767
`Patent No. 8,942,252
`
`I hereby certify that on this 10th day of October 2023, in addition to being
`
`filed and served electronically through the Board’s P-TACTSSystem,a true and
`
`correct copy of the foregoing “PATENT OWNER’S SECOND AMENDED
`
`NOTICE OF APPEAL,”wasfiled and served on the Director of the United States
`
`Patent and Trademark Office by hand delivery at the following address:
`
`Office of the General Counsel
`U.S. Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, Virginia 22314
`
`I also hereby certify that on this 10th day of October 2023, a true and correct
`
`copy of the foregoing “PATENT OWNER’S SECOND AMENDED NOTICE OF
`
`APPEAL)”wasfiled with the Clerk’s Office of the United States Court of Appeals
`
`for the Federal Circuit, via CM/ECF.
`
`I also hereby certify that on this 10th day of October 2023, a true and correct
`
`copy of the foregoing “PATENT OWNER’S SECOND AMENDED NOTICE OF
`
`APPEAL,”wasserved electronically by email in its entirety upon Petitioner as
`
`follows:
`
`Rory P. Shea
`shea@ls3ip.com
`Cole B. Richter
`richter@I|s3ip.com
`George I. Lee
`lee@Is3ip.com
`
`
`
`Case IPR2018-00767
`Patent No. 8,942,252
`
`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.
`
`Dated: October 10, 2023
`
`By:_/Lisa C. Hines/
`Lisa C. Hines
`Senior Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`
`Trials@uspto. gov
`571-272-7822
`
`Paper 60
`Entered: September 19, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`
`Vv.
`
`IMPLICIT, LLC,
`Patent Owner.
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)!
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. MCSHANE,and
`NABEEL U. KHAN,Administrative Patent Judges.
`
`McSHANE,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`35 U.S.C. $$ 144, 318; 37 CFR. § 42. 5(a)
`
`' Weexercise ourdiscretion to issue one Orderto befiled in each
`proceeding. Theparties are not authorized to usethis style heading for any
`subsequent papers.
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`J. INTRODUCTION
`
`Attrial, Implicit, LLC (“Patent Owner”) attempted to antedate the
`
`principal prior art reference asserted by SonosInc. (“Petitioner”), arguing
`
`that the originally named inventors had conceived ofthe invention and
`
`communicated it to their engineeringstaff, who then reducedit to practice
`
`prior to the effective date oftheprior art reference. We determined,
`
`however, that Patent Owner’s evidence wasinsufficient to establish prior
`
`conception ofthe invention and the communication ofthe invention such
`
`that any actual reduction to practice could inure to the inventors’ benefit.
`
`Patent Owner appealed our Final Written Decisions, and while the appeals
`
`were pending, Patent Owner sought changed inventorship ofthe patents-at-
`
`issue and the USPTOissued corrections to inventorship. The United States
`
`Court ofAppeals for the Federal Circuit remanded thecasesto us for an
`
`order addressing what impact, if any,the certificates ofcorrection would
`
`have on the Final Written Decisions in the cases. Herein, we determinethat,
`
`even in light ofthe general retroactive effect of 35 U.S.C. § 256,judicial
`
`estoppel and waiver apply underthe specific circumstancesofthese cases.
`
`Accordingly, Patent Owner’s certificates of correction of inventorship have
`
`no impact on the Final Written Decisions.
`
`I. BACKGROUND
`
`A. Initial Proceedings Before the Board
`
`Petitionerfiled Petitions requesting interpartes review ofclaims 1-3,
`
`6-9, 12, 16, 19, and 23—25 ofU.S. Patent No. 7,391,791 B2 (Ex. 1001, “the
`
`°791 patent”) in IPR2018-00766 (“IPR766”) and for review ofclaims 1-3, 8,
`
`11,and 17 of U.S. Patent No. 8,942,252 B2 (Ex. 1001, “the ’252 Patent’) in
`
`IPR2018-00767 (“IPR767”’). IPR766, Paper 1; IPR767, Paper 1. Patent
`
`Ownerfiled Preliminary Responses in both cases. IPR766, Paper 6; IPR767,
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`Paper 6. On September19, 2018, in IPR766, weinstituted interpartes
`
`review on the groundspresented in the Petition as to whether claims 1-3, 6—
`9, 12, 16, 19, and 23-25 of the ’791 patentare anticipated by Janevski’ or
`
`would have been obvious over Janevski alone and in combination with other
`
`prior art. IPR766, Paper 10. On September19, 2018, in IPR767, we also
`
`instituted interpartes review on the grounds presented in the Petition as to
`
`whetherclaims 1-3, 8, 11, and 17 of the ’252 patent would have been
`
`obvious in view ofJanevski alone and in combination with otherpriorart.
`
`IPR767, Paper8.
`
`Trials were conducted in both IPR766 andIPR767. On September16,
`
`2019, we entered a Final Written Decision (IPR766, Paper46, “Final Dec.”
`
`or “Final Decision”)* in IPR766, determining that Petitioner had
`
`demonstrated by a preponderance ofthe evidence that claims 1-3, 6-9, 12,
`
`16, 19, and 23-25 ofthe ’791 patent are anticipated by Janevski or would
`
`have been obviousover Janevski, alone or in combination with otherprior
`
`art. On September 16, 2019, we also entereda Final Written Decision
`
`(IPR767, Paper 40) in IPR767, determining that Petitioner had demonstrated
`
`by a preponderanceofthe evidence that claims 1-3, 8, 11, and 17 of the
`
`°252 patent would have been obviousin view of Janevski aloneor in
`
`combination with otherpriorart.
`
`Anissue addressedin the Final Written Decisions was Patent Owner’s
`
`assertion that Janevski did not constitute priorart to the challenged claims
`
`under § 102(e) because the subject matter ofthe claims was conceived and
`
`*U.S. Patent No. 7,269,338 B2 (issued September 1 1, 2007) (Ex. 1007).
`
`3 Because ofthe substantial similarities in issues raised and the contents of
`the filings in IPR766 and IPR767,hereafter werefer to the filings of IPR766
`as representative, unless otherwise noted.
`
`3
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`actually reduced to practiceprior to Janevski’s filing date ofDecember11,
`
`2001. See Final Dec. 11. We determined that the evidence presented by
`
`Patent Ownerwasinsufficientto carry its burden ofproduction to establish
`
`conception ofthe invention and the communication ofthe invention such
`
`that any actual reduction to practice could inure to the inventors’ benefit.
`
`See id. at 17-22.
`
`B. Proceedings Before the Federal Circuit
`
`On November8, 2019, Patent Ownerfiled Notices ofAppealto the
`
`Federal Circuit for review of the Final Decisions. See Paper 47. On
`
`November 30, 2021, the Federal Circuit remanded the cases for the limited
`
`purposeof allowing Patent Ownerthe opportunity to request Director review
`
`of the Final Written Decisions. Ex. 3003. On December 17, 2021, Patent
`
`Ownerpetitionedfor certificates of correction to add an individual, Guy
`
`Carpenter, as an inventor to the patents-at-issue. See Paper 62, 5 (“PO
`
`Remand Br.”’). On December30, 2021, Patent Ownerfiled requests for
`
`Director review ofthe Final Written Decisions (Ex. 3100), which were
`
`denied on February 7, 2022 (see Paper 53). On March7, 2022, Patent
`
`Ownerfiled Amended Notices ofAppeal. See Paper 54.
`
`On June 9, 2022, at the Federal Circuit, Patent Owner filed a motion
`
`for remandto await decision on the petitions and then to require the Board to
`
`considerthe effect of changed inventorship. See PO Remand Br. 6. After
`
`the inventorship correction was granted by the USPTO on August18, 2022,
`Patent Ownernotified the Federal Circuit and reiterated its request for
`
`remandto the Board. See id. at 6; Ex. 2097 (Certificate of Correction).
`
`On November9, 2022, the Federal Circuit issued an Order, taking
`
`note ofthe intervening correction ofinventorship certificates that Patent
`
`Owneralleged would serve to moot the appeals. Paper 59. The Federal
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`Circuit stated that “[a]llowingthe PTABto consider the impact ofthese
`
`intervening circumstances on the decisions on appeal in thefirst instance
`
`mayconserveparty and judicial resources.” Jd. at 2. The Order directed
`
`that
`
`Td.
`
`[t]hese appeals are remandedfor the sole purpose of having the
`PTAB issue an order addressing what, if any,
`impact the
`certificates of correction would have on the final written
`decisions in thesecases. This court retainsjurisdiction over the
`appeals.
`
`C. Proceedings on Remand
`
`Theparties requested a conferencecall to discuss the procedure on
`
`remand. On January 25, 2023, acall was convened with counselfor
`
`Petitioner and Patent Owner. See Ex. 2096. Duringthecall, both parties
`
`requested briefing, with openingbriefs of 15 pages, and agreedthat briefings
`
`wereto be directed to the potential retroactive effect ofthe certificates of
`
`correction on the Final Written Decisions. Paper 60, 2. Petitioner asserted
`
`that the briefing should be permitted to identify the issues which had not
`
`been addressed in the Final Written Decisions,if it was determinedthat there
`
`is a retroactive effect ofthe certificates of correction on our Final Written
`
`Decisions. Id.
`
`Wepermitted additional briefing to address the remand, with
`
`Petitionerfiling an opening brief(Paper 64, “Pet. Remand Br.”), and Patent
`
`Ownerfiling an opening brief (Paper 62, “PO RemandBr.”). Petitionerfiled
`
`a responsive brief (Paper 66, “Pet. Remand Resp.Br.”), and Patent Owner
`
`filed a responsivebrief (Paper 65, “PO Remand Resp. Br.”).
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`D. Issues Related to the Status ofJanevski as Prior Art
`
`Janevskiis the primary priorart reference that Petitioner relied upon
`
`in its challenges to claims in IPR766 andIPR767. See Final Dec. 2-3.
`
`Patent Ownerasserted that Janevski does not constitute prior art to the
`
`challenged claims under § 102(e) because the subject matter ofthe claims
`
`was conceived and actually reducedto practice prior to Janevski’s filing date
`
`of December 11, 2001. Jd. at 11. During the trials, Patent Owner contended
`
`that Edward Balassanian and Scott Bradley conceived ofthe inventions of
`
`the patents at least by December 11, 2001. Jd. at 15. Patent Ownerasserted
`
`that the inventors communicated the inventionsto an internal engineering
`
`and developmentstaff, working primarily with engineer Guy Carpenterfor
`
`implementation.‘ Jd. Patent Owner argued that source code corroborated
`
`Mr. Balassanian’s testimony concerning the invention’s conception and
`
`reduction to practice prior to December 11, 2001. Jd.
`
`Wedeterminedthat the evidence wasinsufficient to establish the
`
`conception ofthe invention and the communication ofthe invention to Mr.
`
`
`
`4 The most relevant evidence ofrecord related to these issues is Mr.
`Balassanian’s declaration testimonythat:
`Mr. Bradley and I solved the synchronization problem and
`conceived the inventionsset forth in the Claims of the Patents.
`We then began working on the implementation ofthe inventions
`thereafter, as detailed below. We communicated those inventions
`to BeComm’s internal engineering and developmentstaff to
`reduce them to practice. We worked primarily with Guy
`Carpenter, an Engineering Master at BeComm,to implement the
`inventions, as I describe below.
`Ex. 2001 433. Also relevant is Mr. Balassanian’s deposition testimony:
`“Q. Did Guy Carpenter contribute to .. . to any conception ofthe claims?. .
`. THE WITNESS: I don’t believe so.” Ex. 1019, 59:9-18.
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`Carpenter such that any reduction to practice could inure to the inventors’
`
`benefit. See Final Dec. 18-22. We therefore found that because Patent
`
`Ownerfailed to meetits burden to demonstrate earlier conception ofthe
`
`invention suchthat antedating did not apply, Janevski constituted priorart to
`
`the challenged claimsofthe patents under § 102(e). /d. at 22. We found the
`
`challenged claims unpatentable as anticipated by Janevski or obvious over
`
`Janevski, alone or in combination with otherprior art. Jd. at 50.
`
`Since the timeoftrial, as discussed above, Patent Ownerpetitioned
`
`for and receivedcertificates of correction of inventorship, which name Guy
`
`Carpenteras an inventor ofthe patents in the proceedings. See Ex. 2097;
`
`Paper 62, 5—6. Below wediscuss and evaluate the potential impact the
`
`certificates of correction have on the Final Written Decisionsin these cases
`
`in accordance with the Federal Circuit’s Order.
`
`III. DISCUSSION
`
`A. 35 U.S.C. § 256
`
`Theparties take differing positions on whethercertificates of
`
`correction have retroactive effect on inventorship under 35 U.S.C. § 256.
`
`Patent Ownerarguesthat the language ofthe statute strongly indicates that -
`
`inventorship corrections have retroactive effect because, in contrast to other
`correction provisions, such as §§ 254 and 255, that “contain an explicit
`limitation ‘for causes thereafter arising,’ .
`.
`. such prospective-bound
`
`languageis entirely absent from inventorship corrections of § 256.” PO
`
`Remand Br. 7 (emphasis omitted). Patent Owner argues that undera plain
`
`language analysis ofthe statute, the legislative intent ofthese correction
`
`provisions is clear: a “Certificate of Correction issued for correction of
`
`inventorship hasretroactive effect.” /d. at 7-8 (quoting Roche Palo Alto
`
`LLC v. Ranbaxy Labs. Ltd., 551 F. Supp. 24349, 357, 359 (D.N.J. 2008)).
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`Patent Ownerasserts that, in addition to the language ofthe statute,
`
`case law supports the retroactive effect of inventorship corrections. PO
`
`Remand Br. 8-11. For example, Patent Owner contends that in S/PCO, the
`
`Board analyzedthe statutory language of § 256 in view ofthat of § 255 and
`
`found that § 256 has retroactive effect. /d. at 8-10 (citing Emerson Elec.
`
`Co. v. SIPCO, LLC, IPR2016-00984, Paper 52 at 17-21 (PTAB Jan. 24,
`
`2020) (“SIPCO”) (citing to Vikase Corp. v. Am. Nat’l Can Co., 261 F.3d
`
`1316, 1329 (Fed. Cir. 2001); Roche, 551 F. Supp. 2d at 355)).
`
`Patent Owneralso asserts “that § 256 was enacted as a ‘savings
`
`Provision’ to attenuate the harsh effects on actual inventorsof errorsin
`
`ascertaining proper inventorship.”” PO Remand Br. 11 (citing Egenera, Inc.
`
`v. Cisco Systems, Inc., 972 F.3d 1367, 1377 (Fed. Cir. 2020) (“Egenera’’)).
`
`Patent Ownerasserts that provisions such as § 256 should begiven liberal
`
`construction in favor of applicants. Jd. at 12 (citing Patterson v. Hauck, 341
`
`F.2d 131, 138 (CCPA 1965)).
`
`Petitionerasserts that a certificate of correction for inventorship
`
`cannot be used to curea finding of invalidity under 35 U.S.C. §§ 102(a), (b),
`and (e), or 103(a). Pet. Remand Br. 2. More specifically, Petitioner
`
`contends that“the statute specifies that correcting inventorship can
`
`overcome invalidity ifthe invalidity arises from the act ofmisnaming
`
`inventors. The act ofmisnaming inventors invalidates a patent underpre-
`
`AIA § 102(f).” /d. Petitioner argues that Patent Owner “misreads § 256’s
`
`invalidity-savings provision as grantingit the right to use changed
`
`inventorship to retroactively address any type of invalidity,” but “[t]he
`
`language of § 256 does not providefor this.” Jd. at 3. In support, Petitioner
`
`refers to Egenera, wherethe alleged infringer raised an improper
`
`inventorship issue under § 102(f) as an invalidity defense.
`
`/d.(citing
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`Egenera at 1372). Petitioner distinguishes other cases, not having to do with
`
`inventorship or corrections thereof, from the circumstances here. Jd. at 5-6.
`
`Petitioner further contends that the operative issue “is not whether
`
`§ 256 applies retroactively in some scenarios, the questionis ‘doesit apply
`
`retroactively in this scenario?” Pet. Remand Resp. Br. 1—2 (emphasis
`
`omitted). Petitioner asserts that § 256 applies retroactively to misjoinder and
`
`nonjoinderof inventors, but here “correction does not removethe basis for
`
`invalidity —it has no direct effect on the §§ 102, 103 invalidity grounds
`
`here.” Jd. at 2. Petitioner argues that the case law cited by Patent Ownerin
`
`its opening remandbriefing does not support the retroactive application of
`
`§ 256. Id. at 2-5.
`
`Patent Ownerrespondsby arguing that there are precedential Federal
`
`Circuit decisions that addressed the application of § 256 in cases where
`
`§ 102(f) was not at issue. PO Remand Resp. Br. 2-4. Patent Owner
`
`acknowledgesthat § 102(f) challenges are the most common,but points to
`
`the Riverwood case, where the Federal Circuit considered the potential
`
`application of § 256 underan assessmentofprior art under § 102(e). Jd. at
`
`2-3 (citing RiverwoodInt’] Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1356
`
`(Fed. Cir. 2003)). Patent Owneralso relies upon a Google case, which
`
`considered § 256 under an obviousness analysis with § 102(a) prior art. Jd.
`
`at 3 (citing Google LLC v. IPA Techs, Inc., 34 F.4th 1081, 1088 (Fed. Cir.
`
`2022)). Patent Ownerarguesthat “Section 256 is thus not limitedto validity
`
`challenges under § 102(f) alone.” Jd.
`
`Webegin with the statute. Section 256 states, in relevantpart:
`
`Wheneverthrough error a person is namedin an issued patentas
`the inventor, or through error an inventor is not named in an
`issued patent, the Director may, on application of all the parties
`and assignees, with proof of the facts and such other
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`requirements as may be imposed,issue a certificate correcting
`sucherror.
`
`Theerror of omitting inventors or naming persons whoare not
`inventors shall not invalidate the patent in which such error
`occurred if it can be corrected as providedin this section. The
`court before which such matteris called in question may order
`correction of the patent on notice and hearing ofall parties
`concerned and the Directorshall issue a certificate accordingly.
`35 U.S.C. § 256 (emphasis added). In view ofthe languageofthestatute,
`
`we agree with Patent Ownerthat it supports the conclusionthat a certificate
`
`of correction of inventorship should apply retroactively in general. Section
`
`255 states that a certificate of correction “shall havethe same effect and
`
`operation in law on thetrial of actions for causes thereafter arising,”
`
`indicating that the certificate shall only be effective after issuance. In
`99 66
`
`contrast, § 256’s statement“shall not invalidate the patent”
`
`“if it can be
`
`corrected” indicates that the correction of inventorship generally has a
`
`retroactive effect. /d.;35 U.S.C. § 255; see also SIPCO at 10, 18-21. The
`
`interpretation of § 256 to allow for retroactivity is also consistent with the
`
`case law on this issue. See Vikase, 261 F.3d at 1329; Roche, 551 F. Supp. 2d
`
`at 357-358; Riverwood, 324 F.3d at 1356; Google, 34 F.4th at 1088.
`
`Asto Petitioner’s arguments,generally, that the retroactive effect of
`
`§ 256 applies only to 102(f) issues, we do not agree. Consideration ofthe
`
`Google caseis instructive. In Google, the issue the Federal Circuit
`
`considered waseffect ofpotential correction of inventorship on whether a
`
`reference would be consideredpriorart under 102(a) under § 256. Google,
`
`34 F.4th at 1084, 1088. Similarly, in Riverwood, the Federal Circuit
`
`consideredthe potential effect ofcorrection of inventorship to determine
`
`whether a reference would beprior art under § 102(e) under § 256.
`
`Riverwood, 324 F.3d at 1355—56.
`
`10
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`Wenextturn to Petitioner’s assertion that Section 256 should not be
`
`applied underthe specific circumstanceshere becauseofjudicial estoppel
`
`and waiver.
`
`B. Judicial Estoppel
`
`Petitioner argues that judicial estoppel applies here to preclude the
`
`retroactive effect of § 256. Pet. RemandBr. 6-9. Petitioner asserts that
`
`judicial estoppel applies against a party when:(1) the party takes a later
`
`positionthatis “clearly inconsistent” with an earlier position; (2) the party
`
`succeeds in persuading a court to adopt the earlier position (which thus
`
`poses a “risk of inconsistent court determinations”); and (3) the party
`
`seeking to assert an inconsistent position would derive an unfair advantage
`
`or impose an unfair detriment on the opposing party ifnot estopped. Jd. at 7
`
`(citing Transclean Corp. v. Jiffy Lube Intern., Inc., 474 F.3d 1298, 1307
`
`(Fed. Cir. 2007)). Petitioner contendsthatall three factors are met because
`
`Patent Ownerasserted that Mr. Balassanian and Mr. Bradley were inventors
`
`and communicated the invention to Carpenter for his subsequent reduction
`
`to practice, the Board accepted the premise for the purposes ofmaking
`
`findingsof fact and rulings of law, and Patent Owner now seeksto derive
`
`the unfair advantageofrevisiting the Final Written Decisions. Jd. at 7-9.
`
`In response, Patent Ownerarguesthat estoppel factors 1 and 2 do not
`
`apply becauseits previous position wasthat “Balas[s]annian and Bradley
`
`were inventorsofvalid claims because the work ofMr. Carpenter inured to
`
`their benefit,” but Patent Ownerdid not “‘succeed in persuading’ the Board
`
`of its position.”” PO Remand Resp.Br. 6 (emphasis omitted). Patent Owner
`
`asserts that “[b]Jeing legally wrong, moreover,is not the same as changing
`
`factual positions.” Jd. at 6-7 (emphasis omitted) (citing Cleveland v. Policy
`
`Mem’t Sys., 526 U.S. 795, 802 (1999)).
`
`11
`
`
`
`TPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`Relying on Egenera, Patent Owneralso contendsthat“the
`
`inventorship analysis can even be informed by a tribunal’s view ofthe
`
`evidence, thereby provoking a subsequentcorrection petition.” PO Remand
`
`Br. 12 (citing Egeneraat 1376-78). Because contrary inventorship
`
`arguments were previously made, but correction was nevertheless permitted
`
`in Egenera, Patent Ownerarguesthat it “was justified in correcting
`
`inventorship notwithstanding what it may have argued prior to the Board’s
`
`extensive factfinding regarding Mr. Carpenter and his contributions.” Jd.
`
`Patent Owneralso contendsthat § 256 “does not limit thetime during which
`
`inventorship can be corrected”and “diligence is not a requirementto correct
`
`inventorship undersection 256.” /d. at 14 (quoting Stark v. Advanced
`
`Magnetics, Inc., 119F.3d 1551, 1554 (Fed. Cir. 1997)) (emphasis omitted).
`
`Petitioner contends that Egenerais distinguishable here because
`
`“inventorship ofImplicit’s patent was not at issue in the JPR proceedings.”
`
`Pet. RemandBr.4. Petitioner asserts that Patent Owner’s decision to pursue
`
`changein inventorship was not informed by Board’s view on the evidence
`
`on inventorship because “the Board did not conclude, and had no occasion to
`conclude, that Carpenter waseither a proper inventoror that he was
`
`improperly omitted,” nor did Patent Ownereverassert during the IPR
`
`proceedingsthat there wasan error in inventorship. Jd.
`
`Webegin ouranalysis with thefirst factor ofjudicial estoppel. Here,
`
`there is no dispute that Patent Owner’s assertions and evidentiary testimony
`
`on the inventorship ofthe patent, whichit raised in the context of its attempt
`
`to antedate certain prior art, have changed from the time ofthetrial to the
`
`position now taken on corrected inventorship. More specifically, at trial,
`
`Patent Ownerexplicitly asserted, with the support ofthe testimony ofMr.
`
`Balassanian, that Messrs. Balassanian and Bradley conceived ofthe
`
`12
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`inventions ofthe patents and communicated those inventionsto an internal
`
`engineering and developmentstaff, including Mr. Carpenter,for
`
`implementation. Paper 13, 19-20; Ex. 2001 9] 6, 33, 42, 46; see also Ex.
`
`1019, 59:9-18. Patent Owner has nowchangedits position and has sought
`
`and obtained a correction of inventorship to add Mr. Carpenter as an
`
`inventor. See PO RemandBr. 5—6; Ex. 2097.
`
`Wedo not agree with Patent Owner’sassertionthatit “was justified in
`
`correcting inventorship” because “the subsequently filed correctionsreflect
`
`the Board’s determinations.” See PO Remand Br. 12-13. The Final Written
`
`Decision analyzed whetherthere wassufficient evidence in the record to
`
`corroborate Mr. Balassanian’stestimony on conception and communication
`
`of the invention to Mr. Carpenter. See IPR2018-00767, Paper 40, 22 (“In
`
`summary, none ofthe BeComm intemal documents, demonstrations of
`
`BeCommtechnology, or BeCommsource code corroborate Mr.
`
`Balassanian’s testimony that he and Mr. Bradley conceived ofthe
`
`challenged claimsor that they communicated the inventions to Mr.
`
`Carpenter.”) (emphasis added); see also Final Dec. 19-20 (considering
`
`documents to determine ifthey corroborate conception). Thatis, the issue
`
`addressed in the Final Written Decisions wasnot the correct inventorship of
`
`the patents, but rather the sufficiency of corroborating evidence of
`
`conception and communication ofthe invention in order for the inventors to
`
`benefit from Mr. Carpenter’s work. See Final Dec. 19-20. Forinstance, the
`
`documentthat eventually served as the provisional application, which
`
`appears to have been written by Mr. Carpenter, was considered only to
`
`determine whetherit corroborated Mr. Balassanian’stestimony. See id.
`
`Egenerapresentsa different situation from that here. In Egenera, the
`
`district court’s intervening claim constructionjustified the change in
`
`13
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`inventorship. Egenera at 1376-79. The Federal Circuit acknowledged that
`“fijnventorship ... can depend on claim construction,” and once claim
`construction wasdecided,“it was entirely consistent for Egenera” to request
`
`correction ofinventorship. Id.; see alsoid. at 1376 “Ultimately,
`inventorship is a legal conclusion premised on underlying factualfindings,
`and onethat depends on claim construction.”(citing Inre VerHoef, 888 F.3d
`1362, 1365 (Fed. Cir. 2018); Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292,
`1302 (Fed. Cir. 2002)) (emphases added)). The Federal Circuit found that
`
`“the district coust’s intervening claim-construction and inventorship
`determinations furtherjustify any seeming inconsistency.” /d. at 1376,
`1379; see also id. at 1379 (“«[O]nce those issues were decided[‘a [claim ]
`
`construction that the inventorship question wasdirectly predicated on’ ], it
`
`wasentirely consistent for Egenera to request an accompanying formal
`
`correction of inventorship.”).
`
`Here, however, Patent Ownerhasnotidentified any changedlegal
`
`determ ination upon which inventorship depends that justifies setting aside
`
`judicial estoppel. The claim construction ruling in Egenerawasa legal
`determination that waslargely out ofEgenera’scontrol.° Our determination
`
`regardingthe sufficiency of corroborating evidence, on the other hand,is a
`
`factual determination based on the documentary evidence ofrecord as
`
`argued by Patent Owner, and whichwasin the sole control ofPatent Owner.
`
`Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014) (“We have
`
`treated the sufficiency of corroboration as a question offact.””). The
`
`
`
`> Indeed, Egenera opposedthedistrict court’s construction. Egenera at 1379
`(“Egenera consistently protested the means-plus-function construction both
`at the district court and on appeal—aconstruction that that the inventorship
`question wasdirectly predicated on.”)
`
`14
`
`
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`documentary evidencein thetrial record could be consistent with Patent
`
`Owner’s assertions duringtrial that Mr. Balassanian and Mr. Bradley
`
`conceived ofthe invention and then communicated that invention to Mr.
`
`Carpenter (
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