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`Paper No. 46
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` Filed: December 30, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`SONOS, INC.,
`Petitioner,
`v.
`IMPLICIT, LLC,
`Patent Owner.
`______________________
`
`Case No. IPR2018-00767
`Patent No. 8,942,252
`______________________
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`PATENT OWNER IMPLICIT, LLC’S REQUEST FOR REHEARING BY
`THE DIRECTOR PURSUANT TO UNITED STATES V. ARTHREX
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`Case IPR2018-00767
`Patent No. 8,942,252
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`I.
`II.
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`Background ...................................................................................................... 3
`A.
`The ’252 Patent ..................................................................................... 3
`B.
`Board Proceedings and Inventorship Questions. .................................. 5
`C.
`The Appeal and Supreme Court Decisions. .......................................... 8
`D.
`Petition for Correction Filed. ................................................................ 9
`III. Argument ....................................................................................................... 10
`A.
`Legal Standard ..................................................................................... 10
`B.
`The Director Should Hold this Request Pending Issuance of the
`Correction, Then this IPR Proceeding Should Be Remanded to
`the Board for Consideration Under the Corrected Inventorship. ........ 10
`1.
`A Correction of Named Inventor Has Been Filed .................... 10
`2.
`Correction of Inventorship Is Retroactive ................................ 11
`C. A Principal Officer Must Consider this Rehearing Request. .............. 15
`IV. Conclusion ..................................................................................................... 15
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`i
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`I.
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`Case IPR2018-00767
`Patent No. 8,942,252
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`Introduction
`In IPR2018-00767, Patent Owner Implicit, LLC (“Implicit”) requests
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`Director review of the Board’s September 16, 2019, Final Written Decision (Paper
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`40) (“Decision”) finding unpatentable the challenged claims of U.S. Patent No.
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`8,942,252 (Ex. 1001, “the ’252 patent”). The Board held as the linchpin of the
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`Decision that U.S. Patent No. 7,269,338 to Janevski (“Janevski”) (Ex. 1007) was
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`prior art, by just six days, to the provisional application resulting in the ’252 patent.
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`Decision at 9-23.
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`Specifically, the Board determined that the work of a company engineer—
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`Mr. Carpenter—could not inure to the benefit of the two named inventors—
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`Messrs. Balassanian and Bradley—in order to antedate Janevski. See id. Because
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`of its conclusion that the source code development efforts of Mr. Carpenter were
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`not legally attributable to the inventors named on the ’252 patent, the Board based
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`its obviousness analysis primarily on Janevski. See id. at 5-6, 23-50.1
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`1 The Board held that Petitioner demonstrated that the ’252 patent’s claims 1–3, 8,
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`11 and 17 would have been obvious over the combination of Janevski and other
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`references such as Azevado (Ex. 1010), Mills (Ex. 1011), Berthaud (Ex. 1012),
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`and/or Eidson (Ex. 1013). Decision at 3, 53-54.
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`1
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`Patent No. 8,942,252
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`Implicit appealed, 2 and successfully sought remand pursuant to the Federal
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`Circuit’s decision in Arthrex. Subsequent to the Supreme Court’s remedy
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`articulated in United States v. Arthrex Inc., 141 S. Ct. 1970 (2021), the Federal
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`Circuit ordered that Implicit file its requests for Director rehearing within 30 days.
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`Implicit, LLC v. Sonos, Inc., 2020-1173, -1174, D.I. 70 at 2 (Fed. Cir. Nov. 30,
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`2021).
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`This request seeks Director rehearing of the Decision now that Implicit seeks
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`to correct inventorship of the ’252 patent under 37 CFR § 1.324. On December 17,
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`2021, Implicit separately sought to correct the ’252 patent by adding Mr. Carpenter
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`as a co-inventor, commensurate with the conclusions of Board and its findings. See
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`Decision at 9-23. Implicit’s Petition for Correction of Inventorship of the ’252
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`patent, with its accompanying statements and fees, were filed with the agreement
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`2 The Federal Circuit appeal (No. 2020-1173 (lead)) of the Board proceedings in
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`IPR2018-00766 for U.S. Patent No. 7,391,791 (“the ’791 patent”), was
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`consolidated with the appeal (No. 2020-1174) of the Board proceedings in
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`IPR2018-00767 for U.S. Patent No. 8,942,252. Implicit, LLC v. Sonos, Inc., 2020-
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`1173, -1174, D.I. 2 (Fed. Cir. Dec. 2, 2019). Petitions to the Director are being
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`filed in both IPRs simultaneously.
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`2
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`Patent No. 8,942,252
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`of the currently named inventors, Mr. Balassanian and Mr. Bradley, as well as the
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`assignee of record, Implicit.
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`Implicit has thus pursued its statutory rights under 35 U.S.C. § 256 and met
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`the regulatory requirements of 37 CFR § 1.324(a)-(b) to correct the ’252 patent’s
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`inventorship. With such a change to the inventorship, Implicit would successfully
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`antedate the Janevski reference. Significantly, corrections of named inventors
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`under § 256 have been deemed by the Federal Circuit, district courts, and this
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`agency to apply retroactively. See infra § III.B (collecting cases).
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`Inasmuch as IPR2018-00767 is awaiting final agency review, Implicit
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`respectfully requests that the Director hold this rehearing request until the
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`correction of the ’252 patent inventorship is finalized, and then remand
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`proceedings to the Board for further consideration of patentability.
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`II. Background
`A. The ’252 Patent
`The ’252 patent is entitled “Method and System Synchronization of Content
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`Rendering” and issued on January 27, 2015. Ex. 1001. The ’252 patent claims
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`priority to U.S. Provisional Application No. 60/341,574, filed on December 17,
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`2001. Id. at [60].3 The problem of synchronizing the rendering of content is an old
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`3 The ’252 patent is a continuation of the ’791 patent (at issue in IPR2018- 00766).
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`3
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`Patent No. 8,942,252
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`one; multimedia presentations, for example, confronted the problems of
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`synchronizing video, audio, and text. Id. at 1:26–31. The ’252 patent is directed to
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`a method and system for synchronizing the rendering of content on multiple
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`networked devices; it allows, for example, simultaneous playback of audio and/or
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`video on multiple devices.
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`The ’252 patent explains that different rendering devices may have different
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`time domains that make synchronized presentation difficult, and a goal of the
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`invention is to render multimedia presentation in a synchronized manner. Id. at
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`1:40-42, 1:54–56. The ʼ252 patent provides a method and system for
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`“synchronizing the rendering of content at various rendering devices.” Id. at 2:17–
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`18. In this method, “each device has a device time and a rendering time.” Id. at
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`2:18– 20. “The synchronization system designates one of the rendering devices as
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`a master rendering device and designates all other rendering devices as slave
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`rendering devices. Each slave rendering device adjusts the rendering of its content
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`to keep it in synchronization with the master rendering device.” Id. at 2:33–38. The
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`master rendering device sends messages with its device and rendering time to the
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`slave devices, which determine whether they are synchronized with the master
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`device and determine the differential if they are not synchronized. Id. at 2:38–43.
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`The time differentials between master device time and slave device time can be
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`smoothed using various techniques such as averaging the last few time differentials
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`4
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`Patent No. 8,942,252
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`using a decaying function to limit the impact of the oldest time differential. Id. at
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`7:16–26. Once the device and rendering time differentials are known, the slave
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`rendering devices may adjust their rendering of content as appropriate to
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`compensate for the difference. Id. at 4:24–40.
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`Board Proceedings and Inventorship Questions.
`B.
`On March 9, 2018, Sonos filed its petition for inter partes review of the ’252
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`patent, alleging unpatentability under 35 U.S.C. §103 and relying primarily on
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`Janevski. See supra n.1. Janevski has an effective filing date of December 11,
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`2001—only six days before the December 17th filing of the provisional application
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`to which the ’252 patent claims priority. Decision at 9-10; compare Ex. 1001, at
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`[60] and Ex. 1007, at [22].
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`Implicit argued that Janevski was not prior art to the ’252 patent. POR
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`(Paper 9) at 14. “Prior to December 11, 2001, . . . the inventors conceived of the
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`inventions of the Challenged Claims, and those inventions were reduced to practice
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`in time to remove Janevski as a prior art reference.” Id.; id. at 14-31 (and exhibits).
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`The inventions of the ’252 patent originated with BeComm’s “Juno project,”
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`which recognized that true synchronization was an unresolved issue in the art. See
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`POR at 19 (citing Ex. 2001, ¶¶ 26-32; Ex. 2009 at 15; Ex. 2011 at 37-38). Inventor
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`Mr. Balassanian was the CEO of BeComm and working on the Juno project with
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`coinventor Mr. Bradley. Id. (citing Ex. 2001, ¶32; Ex. 2011 at 8). Implicit’s briefs
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`5
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`Patent No. 8,942,252
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`before the Board described the activities of the two named coinventors on the ’252
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`patent, including how they worked with the company’s Engineering Master, Mr.
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`Carpenter, in order to implement the inventions of the claims. See id. at 14-16, 19-
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`31. Based on these events while developing synchronization functionality—
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`including communicating the inventions to an internal staff member for
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`implementation—Implicit asserted that the claimed subject matter was conceived
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`and reduced to practice prior to Janevski’s filing date of December 11, 2001. See
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`id. at 14–31; Ex. 2001, ¶¶ 6, 33, 42-47; see also Hear’g Tr. 35:2–5, 40:2–43:7.
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`Patent Owner pointed to various corroborating materials it viewed as providing
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`support. See, e.g., POR (Paper 9) at 19-31 and POR (IPR2018-00766, Paper 13) at
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`18-31 (citing, e.g., Ex. 2001; Ex. 2008; Ex. 2011; Exs. 2012-13; Exs. 2015-16; Ex.
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`2018; Exs. 2020-21; Exs. 2025-29; Ex. 2031; Exs. 2032-34; Exs. 2037-38; Ex.
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`2056; Ex. 2060; Ex. 2063; Ex. 2065; Exs. 2074-75; Exs. 2077-78; Ex. 2080; Exs.
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`2082-87); Decision at 19-23.4
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`Sonos replied, however, that Implicit could not successfully antedate the
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`’252 patent prior to the December 11, 2001, filing date of Janevski:
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`4 Implicit successfully argued that the cited documentary evidence serves as
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`corroboration because the documents were stored in a Concurrent Version System
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`repository and time stamped when added or updated. PO Surreply 3; POR at 20.
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`6
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`Patent No. 8,942,252
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`Petitioner argues that Patent Owner relies on source code
`written by a non-inventor, Mr. Guy Carpenter, to
`establish conception of the invention but that no
`evidence, other than Mr. Balassanian’s testimony, is
`presented showing that the inventors communicated the
`invention to Mr. Carpenter. Thus, Petitioner argues, the
`record is devoid of evidence that Mr. Carpenter’s work
`inured to the benefit of the inventors.
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`Decision at 14 (citing Pet. Rep. at 9) (citing Exs. 2019, 2017, 2020 (each of which
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`lists Mr. Carpenter as the owner)). The Board noted of the document entitled
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`“synchronization.doc” (Ex. 2037) that it
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`was filed on December 17, 2001, as the provisional
`application to which the ʼ252 Patent claims priority and
`which Patent Owner contends was drafted at least as
`early as December 9, 2001. The evidence shows,
`however, that the December 9 version of this document,
`which appears to be the version that was the basis for the
`provisional application, was authored by non-inventor
`Mr. Carpenter.
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`Decision at 20. The metadata indicated that the author was listed as ‘guyc,’ which
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`appears to identify Guy Carpenter, who wrote the source code. See id. at 20-21;
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`Ex. 2077 at 30-35 (indicating that “guyc” created “synchronization.doc” on
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`“Sunday, December 9, 2001”); see also Ex. 2038 (email written by Mr. Bradley,
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`who stated that this document was written by Mr. Carpenter).
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`But the Board ultimately found that there was no documentary evidence in
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`the record of any communication of the invention from Messrs. Balassanian and
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`Bradley to Mr. Carpenter, and that no one else was involved in development of the
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`7
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`Patent No. 8,942,252
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`source code besides Mr. Carpenter. See Decision at 21-22. Given the apparent
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`contributions of Mr. Carpenter, the Board held that Implicit failed to carry its
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`burden that Mr. Balassanian and Mr. Bradley could be deemed by inurement to
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`have conceived and reduced to practice the invention of the ’252 patent before
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`December 11, 2001. Decision at 18-22. Accordingly, on September 16, 2019, the
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`Board held that Janevski constituted prior art for its conclusions of obviousness
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`unpatentability. Id. at 23, 53.
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`C. The Appeal and Supreme Court Decisions.
`After the Board issued the Decision, Implicit timely filed a notice of appeal
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`in IPR2018-00767. Notice of Appeal, Paper 41 (Nov. 8, 2019). Implicit’s opening
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`brief at the Federal Circuit raised an Arthrex challenge regarding the
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`constitutionality of the panel that rendered the Decision; Implicit’s follow-up
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`motion to vacate and remand on the same grounds was granted. Implicit, LLC v.
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`Sonos, Inc., 2020-1173, -1174, D.I. 61 at 2 (Fed. Cir. Dec. 23, 2020) (on motion,
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`granting vacatur and remanding “to the Board for proceedings consistent with this
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`court’s decision in Arthrex”).
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`While the remanded cases were stayed before the USPTO, the government
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`petitioned for a writ of certiorari. Hirshfeld v. Implicit, LLC, et al., No. 20-1631
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`(May 21, 2021). The Supreme Court on June 21, 2021, decided the main issue,
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`holding that inferior officers “lack[] the power under the Constitution to finally
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`8
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`Patent No. 8,942,252
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`resolve” patentability questions, and “must be ‘directed and supervised . . . by
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`others who were appointed by Presidential nomination with the advice and consent
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`of the Senate.’” United States v. Arthrex, Inc., 141 S. Ct. 1970, 1980, 1987 (2021)
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`(citation omitted). The Court prescribed the option of Director rehearing as a
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`remedy. Id. Implicit’s case remained pending at the Supreme Court, however, until
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`a “GVR” in fall of 2021. Hirshfeld v. Implicit, LLC, et al., No. 20-1631 (Oct. 18,
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`2021) (petition granted, judgment vacated, and case remanded). The Federal
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`Circuit subsequently recalled its mandate and issued a limited remand to the
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`Director for both IPRs, while retaining jurisdiction over the consolidated appeals,
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`allowing Implicit to request review of the “final written decisions” in IPR2018-
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`00766 and IPR2018-00767. Implicit, LLC v. Sonos, Inc., No. 2020-1173, -1174,
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`D.I. 70 (Fed. Cir. Nov. 30, 2021). This request was timely filed.
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`Petition for Correction Filed.
`D.
`Following the Federal Circuit’s order, Implicit submitted to the Director’s
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`office a “Petition for Correction of Inventorship Under 37 CFR § 1.324” for both
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`the ’791 and ’252 patents. The relevant petition here sought to “correct the
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`inventorship of U.S. Patent No. 8,942,252. Specifically, addition of Guy A.
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`Carpenter as an inventor is requested. Through error, Guy A. Carpenter was not
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`named as an inventor of U.S. Patent No. 8,942,252.” As required by § 1.324(b),
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`the petitions for correction were accompanied by statements agreeing to the change
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`9
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`Case IPR2018-00767
`Patent No. 8,942,252
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`in inventorship, respectively signed by Guy Carpenter (being added as an
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`inventor), Edward Balassanian and Scott Bradley (each currently named
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`inventors), as well as the assignee, Implicit.
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`III. Argument
`A. Legal Standard
`“The Director’s review may address any issue, including issues of fact and
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`issues of law, and will be de novo.” See https://www.uspto.gov/patents/patent-trial-
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`and-appeal-board/procedures/arthrex-qas (Question A1).
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`B.
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`The Director Should Hold this Request Pending Issuance of the
`Correction, Then this IPR Proceeding Should Be Remanded to
`the Board for Consideration Under the Corrected Inventorship.
`A Correction of Named Inventor Has Been Filed
`1.
`Under the applicable regulatory provision,
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`Whenever through error a person is named in an issued
`patent as the inventor, or an inventor is not named in an
`issued patent, the Director, pursuant to 35 U.S.C. 256,
`may, on application of all the parties and assignees . . .
`issue a certificate naming only the actual inventor or
`inventors.
`37 CFR § 1.324(a). Implicit has now sought correction of inventorship on the ’252
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`patent (and the ’791 patent) pursuant to § 1.324(a)-(b).
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`The Board’s Decision identified the specific role that Mr. Carpenter played
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`in the process of invention. See supra § II.B. While Implicit argued in the trial
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`proceedings that the work of Mr. Carpenter, as a company employee, ought to
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`10
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`Patent No. 8,942,252
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`inure to the benefit of Messrs. Balassarian and Bradley as named coinventors, the
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`Board rejected this view. See id.; Decision 19-23.
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`In light of the Board’s determination, id., Implicit has exercised its statutory
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`right under § 256, because the ’252 patent’s inventorship “can be corrected as
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`provided in this section.” 35 U.S.C. § 256; cf. Patterson v. Hauck, 52 C.C.P.A.
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`987, 997 (1965) (provisions such as § 256 “should be given a liberal construction
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`in favor of applicants, permitting them to make such changes as more thorough
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`consideration of facts may show to be necessary in order to comply accurately with
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`the law in naming inventors”). Implicit obtained the signatures and agreements
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`from the necessary entities; it has now submitted to the Director’s office all
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`statements and fees required under 35 CFR § 1.324(b) in order to obtain a
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`correction of inventorship by adding Mr. Carpenter to the ’252 and ’791 patents.
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`The requests are currently pending before the Director, who alone has authority to
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`determine whether a certificate of correction should issue for each.
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`Correction of Inventorship Is Retroactive
`2.
`The relevant statute further specifies that “[t]he error of omitting inventors
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`or naming persons who are not inventors shall not invalidate the patent in which
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`such error occurred if it can be corrected as provided in this section.” 35 U.S.C.
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`§ 256. Numerous tribunals have determined that corrections of named inventorship
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`under § 256 thus have “retroactive” effect, i.e., as if it were effective on the day the
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`11
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`patent issued.
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`Patent No. 8,942,252
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`The SIPCO case assessing a sister provision at § 255 is instructive. There,
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`the Board found several claims unpatentable. SIPCO argued that due to a clerical
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`error during prosecution, the parent application was identified by the wrong
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`number on the face of the ’780 patent, thereby rendering the priority claim
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`defective. The Board still concluded that various claims of the ’780 patent were
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`unpatentably obvious over the grandparent ’732 patent on the premise of the
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`uncorrected priority date. Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984,
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`Paper 43 at 61 (P.T.A.B. Oct. 25, 2017). SIPCO then filed for typographical
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`correction under § 255, but the certificate did not issue until months into the
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`appeal; the Federal Circuit, however, granted patentee’s motion to remand to the
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`Board to consider the effect of the certificate of correction that issued for the ’780
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`patent after entry of the FWD. SIPCO, LLC v. Emerson Elec. Co., 2018-1364, D.I.
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`29 at 2-4 (Fed. Cir. Jun. 27, 2018) (“the case is remanded for the Board to issue an
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`order addressing what, if any, impact the certificate of correction has on its final
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`written decision in this case”).
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`On remand, the Board in SIPCO determined, by analysis of statutory
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`language, that § 256 does have retroactive effect whereas § 255 does not:
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`A comparison of § 255 with § 256 further indicates that
`§ 255 does not have retroactive effect. Section 256
`authorizes the Director to issue a certificate to correct
`named inventor errors . . . . [B]y stating that a patent shall
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`12
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`Patent No. 8,942,252
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`not be invalidated if inventorship is corrected, § 256
`provides for retroactive effect of a certificate correcting
`named inventorship. By stating that the error shall not
`invalidate the patent, certificates issued under this section
`have retroactive effect in general. This is in contrast
`with § 255, which does not include any similar provision.
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`Our interpretation of § 256 as having retroactive effect is
`consistent with the Federal Circuit’s decision in
`Vikase . . . [and] with the district court’s decision in
`Roche . . . .
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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) (emphasis added) (citing Vikase Corp. v. Am. Nat’l Can
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`Co., 261 F.3d 1316, 1329 (Fed. Cir. 2001) (stating that Ҥ 256 provides that an
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`error of inventorship does not invalidate the patent if such error ‘can be corrected
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`as provided in this section’”) and Roche Palo Alto LLC v. Ranbaxy Labs. Ltd., 551
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`F. Supp. 2d 349, 349, 355 (D.N.J. 2008) (noting distinction that under § 254 the
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`certificate would not have retroactive effect, whereas under § 256 it would apply
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`retroactively)); see also Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280,
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`1294 (Fed. Cir. 2000) (rejecting the retroactive application of a certificate of
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`correction issued under § 254 based upon the “thereafter arising” language which is
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`absent from § 256). The Federal Circuit recently affirmed the Board without
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`opinion. SIPCO, 2018-1364, D.I. 78 (Fed. Cir. R. 36) (Fed. Cir. Jan. 21, 2021).
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`Thus, § 256 corrections should “have retroactive effect in general.” See
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`SIPCO, IPR2016-00984, Paper 52 at 21. In this case, the corrected inventive entity
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`13
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`of the ’252 patent can readily swear behind Janevski’s six-day priority of
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`December 11, 2001, based on the existing evidence of record. See supra § II.B
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`(and cited exhibits). Accordingly, no ground of unpatentability prevails once
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`Janevski is removed. See supra n.1.
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`Moreover, as SIPCO demonstrates, even after-arising certificates of
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`correction can prompt the Federal Circuit during appeal to seek the Board’s views
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`concerning its prior patentability opinions. 5 See SIPCO, 2018-1364, D.I. at 29 at 4.
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`The posture here—already remanded back to the Director for an Arthrex review
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`request—permits the same analysis to occur, but even more efficiently inasmuch as
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`the correction and rehearing petition are both already committed to the Director. 6
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`5 If timing of the correction is argued to distinguish SIPCO from this case, it should
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`be noted “that diligence is not a requirement to correct inventorship under section
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`256.” Stark v. Advanced Mags., Inc., 119 F.3d 1551, 1554 (Fed. Cir. 1997).
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`Section 256, on its face, does not limit the time during which inventorship can be
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`corrected. This makes sense given the sometimes arduous process of arriving at
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`agreement and seeking signatures in order to effect a change in inventorship. Such
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`issues do not exist under § 255, where typographical errors are easily addressable.
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`6 To the extent that corrections will issue during the ongoing appeal, Implicit
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`intends to ask the court for a similar SIPCO remand and/or to take judicial notice
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`14
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`Implicit respectfully requests that the Director hold this rehearing request until the
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`correction issues, at which time the retroactive effect of the corrected inventorship
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`should be assessed by the Board on remand.
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`C. A Principal Officer Must Consider this Rehearing Request.
`Respectfully, Implicit’s rehearing request should not be decided until a
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`Director is appointed and confirmed. In Arthrex, 141 S. Ct. at 1985, the Supreme
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`Court held that: “Only an officer properly appointed to a principal office may issue
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`a final decision binding the Executive Branch . . . .”
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`IV. Conclusion
`For these reasons, the Director should hold this rehearing request until
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`issuance of the correction, then remand to the Board for consideration of the ’252
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`patent’s patentability under the corrected inventorship.
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`Dated: December 30, 2021
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`Respectfully submitted,
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`
`By: /Timothy P. McAnulty/
`Timothy P. McAnulty, Reg. No. 56,939
`Counsel for Patent Owner
`
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`of them. Function Media v. Google, Inc., 708 F.3d 1310, 1331 n. 4 (Fed. Cir. 2013)
`
`(“It is proper to take judicial notice of a decision from another court or agency at
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`any stage of the proceeding, even if it was not available to the lower court.”).
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`15
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`
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`Case IPR2018-00767
`Patent No. 8,942,252
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing PATENT OWNER
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`IMPLICIT, LLC’S REQUEST FOR REHEARING BY THE DIRECTOR
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`PURSUANT TO UNITED STATES V. ARTHREX was served electronically via
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`email on December 30, 2021, in its entirety on the following:
`
`Rory P. Shea
`shea@ls3ip.com
`Cole B. Richter
`richter@ls3ip.com
`George I. Lee
`lee@ls3ip.com
`Michael P. Boyea
`boyea@ls3ip.com
`LEE SULLIVAN SHEA & SMITH LLP
`224 N. Desplaines St., Suite 250
`Chicago, IL 60661
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`Petitioner has consented to service by electronic mail.
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`
`
`
`
`/William Esper/
`William Esper
`Case Manager and PTAB Coordinator
`
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`Dated: December 30, 2021
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`
`
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