`571-272-7822
`
`Paper 11
`Entered: June 2, 2022
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HYUNDAI MOTOR AMERICA, MAZDA MOTOR OF AMERICA, INC.,
`SUBARU OF AMERICA, INC., and VOLVO CAR USA, LLC,
`Petitioners,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`____________
`
`IPR2022-00224
`Patent 9,355,405 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2022-00224
`Patent 9,355,405 B2
`
`
`INTRODUCTION
`I.
`Petitioners, Hyundai Motor America, Mazda Motor of America, Inc.,
`Subaru of America, Inc., and Volvo Car USA, LLC, request institution of an
`inter partes review to challenge the patentability of claims 12–16 (the
`“challenged claims”) of U.S. Patent 9,355,405 B2 (Ex. 1001, “the ’405
`patent”). Paper 1 (“Petition” or “Pet.”). Concurrently with the Petition,
`Petitioners filed a Motion for Joinder with Volkswagen Group of America,
`Inc. v. StratosAudio, Inc., Case IPR2021-00720 (“the Volkswagen IPR”).
`Paper 6 (“Motion” or “Mot.”). On March 14, 2022, pursuant to 37 C.F.R.
`§ 42.107(b), Patent Owner filed a Waiver of Patent Owner Preliminary
`Response, stating that Patent Owner “does not oppose Petitioner’s Motion
`for Joinder.” Paper 10, 1 (“Waiver”).
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioners would prevail with
`respect to at least one challenged claim, we institute an inter partes review.
`We also grant the Motion for Joinder for the reasons discussed below.
`A. Related Matters
`
`The parties identify the following as related matters: StratosAudio,
`Inc. v. Hyundai Motor America, No. 20-cv-01125-ADA (W.D. Tex.);
`StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 20-cv-01126-ADA
`(W.D. Tex.); StratosAudio, Inc. v. Subaru of America, Inc., No. 20-cv-
`01128-ADA (W.D. Tex.); StratosAudio, Inc. v. Volvo Cars USA, LLC, No.
`20-cv-01129-ADA (W.D. Tex.); StratosAudio, Inc. v. Volkswagen Group of
`America, Inc., No. 6:20-cv-1131 (W.D. Tex.); and Volkswagen Group of
`America, Inc. v. StratosAudio, Inc., IPR2021-00720 (PTAB Apr. 16, 2021).
`Pet. 2; Paper 7, 1.
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`2
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`Patent 9,355,405 B2
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`Patent Owner also identifies these related matters: In re Volkswagen
`
`Group of America, Inc., No. 21-149 (Fed. Cir.); In re Volkswagen Group of
`America, Inc., No. 22-108 (Fed. Cir.); and In re Hyundai Motor America,
`No. 22-109 (Fed. Cir.). Paper 7, 1–2.
`B. The ’405 Patent
`The ’405 Patent relates to media advertising and associating an
`advertising media signal with another media signal. Ex. 1001, 1:24–26. The
`’405 Patent explains that it is generally desirable to associate products with
`specific characteristics and such associations may increase the chance that a
`potential customer will decide to purchase a product when the product is
`associated with a favorable characteristic. Id. at 1:28–36. In view of this,
`the ’405 Patent states that an advertisement may be more effective if it is
`associated with an image of a celebrity or another media element that
`exhibits favorable characteristics. Id. at 1:36–40.
`The ’405 Patent describes a media enhancement system that is
`configured to associate a secondary media signal (e.g., an advertisement) to
`a primary media signal (e.g., a radio broadcast). Id. at 3:15–19. The ’405
`Patent explains that the secondary media signal may be based on the content
`of the primary media, user characteristics (e.g., demographic and/or
`geographic information), and/or third party preferences (e.g., the goals of
`advertisers). Id. at 3:23–27.
`The ’405 Patent provides an example in which a radio station
`transmits a song in a first media signal that is received by a user enabled-
`device (e.g., a cellular phone with a radio). Id. at 3:33–36. A media
`association system analyzes the song to determine what media elements can
`be associated with the song and the media association system provides a
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`Patent 9,355,405 B2
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`second media signal (e.g., an advertisement) to the user enabled-device. Id.
`at 3:36–42. While the user enabled-device is playing the song, the user
`enabled-device displays the media content in the second media signal (e.g., a
`still or moving picture of the advertised product). Id. at 3:43–46. The ’405
`Patent provides another example in which a user enabled-device is playing a
`song from a first media signal, media content from a second media signal
`(e.g., a still or moving picture with selectable audio of an advertised product)
`is displayed by the user enabled-device, and the audio track for the first
`media signal is paused upon selection of the second media signal audio. Id.
`at 3:47–53.
`C. Evidence
`Petitioners rely upon the following evidence in the Petition.
`(1) U.S. Patent No. US 6,374,177 B1, issued April 16, 2002 (“Lee”)
`(Ex. 1004);
`(2) U.S. Patent Application Publication No. 2003/0220835 A1,
`published November 27, 2003 (“Barnes”) (Ex. 1005);
`(3) United States RBDS Standard, Radio Broadcast Data System
`(RBDS) Subcommittee of the National Radio Systems Committee (NRSC)
`(Apr. 9, 1998) (“RBDS Standard”) (Ex. 1006); and
`(4) Declaration of Tim A. Williams, Ph.D. (Ex. 1003).
`See Pet. 23–80.
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`Prior Art
`
`Lee
`
`D. Asserted Grounds of Unpatentability
`Petitioners assert the following grounds of unpatentability in the
`Petition.
`Grounds
`1, 2
`
`Basis Claims Challenged
`§102,
`12–16
`§103
`§102,
`§103
`§103 13, 14
`
`12, 15, 16
`
`3, 4
`
`Barnes
`
`5
`Pet. 4–5.
`
`Barnes, RBDS Standard
`
`II. ANALYSIS
`Petitioners contend that the Petition “presents the same art, arguments,
`and grounds as the [Volkswagen] proceeding” and that “[t]he Petition and
`expert declaration are substantially identical to those submitted in the
`[Volkswagen] proceeding, except for non-substantive introductory matters
`and mandatory notices.” Pet. 1. Patent Owner does not contest Petitioners’
`assertions. Waiver, 1.
`In the Volkswagen IPR, we instituted an inter partes review of claims
`12–16 of the ’405 Patent on the following bases.1
`
`
`1 In the Volkswagen IPR, although we did not determine that the Petition
`demonstrated a reasonable likelihood of prevailing with respect to certain
`challenges under 35 U.S.C. § 103(a), we nonetheless instituted inter partes
`review on all claims and all grounds raised in the Petition pursuant to SAS
`Institute Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) (holding that a
`decision to institute under 35 U.S.C. § 314 may not institute on fewer than
`all claims challenged in the petition). Volkswagen IPR, Paper 16, 55–56.
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`See Volkswagen IPR, Paper 16, 10 (PTAB Oct. 22, 2021) (“Volkswagen
`Dec.”).
`Based on our review of the record, the Petition in this proceeding
`asserts the same grounds of unpatentability as the ones on which we
`instituted review in the Volkswagen IPR. Compare Pet. 4–5, with
`Volkswagen Dec. 10. Patent Owner has waived filing a preliminary
`response, and does not contest Petitioners’ position that the two proceedings
`assert the same grounds of unpatentability against claims 12–16 of the ’405
`Patent. See Waiver, 1.
`
`III. CONCLUSION
`For the same reasons discussed in our institution decision in the
`Volkswagen IPR, we are persuaded that the Petition demonstrates a
`reasonable likelihood of prevailing in showing the unpatentability of at least
`one of the challenged claims of the ’405 Patent. Because Petitioners have
`satisfied the threshold for institution as to at least one claim, we determine
`that the Petition warrants institution of inter partes review on all claims and
`all grounds raised in the Petition. See SAS Institute Inc. v. Iancu, 138 S. Ct.
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`1348, 1359–60 (2018) (holding that a decision to institute under 35 U.S.C. §
`314 may not institute on fewer than all claims challenged in the petition).
`
`
`IV. MOTION FOR JOINDER
`The statutory provision governing joinder in inter partes review
`proceedings (35 U.S.C. § 315(c)) reads:
`
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response
`under section 313 or the expiration of the time for filing such
`a response, determines warrants the institution of an inter
`partes review under section 314.
`As the moving party, Petitioners bear the burden of proving that they
`are entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for
`joinder should: set forth the reasons joinder is appropriate; identify any new
`grounds of unpatentability asserted in the petition; and explain what impact
`(if any) joinder would have on the trial schedule for the existing review. See
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr.
`24, 2013).
`Petitioners filed the Motion on November 19, 2021, less than one
`month after institution of the Volkswagen IPR. See 37 C.F.R. § 42.122(b).
`As noted, the Petition in this case asserts the same unpatentability grounds
`on which we instituted review in the Volkswagen IPR. See Mot. 6. The
`Petition also relies on the same prior art analysis and expert testimony
`submitted in the Volkswagen IPR. Id. Indeed, the Petition is substantively
`identical to the petition filed in the Volkswagen IPR. Id. Thus, this inter
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`partes review does not present any ground or matter not already at issue in
`the Volkswagen IPR. Id.
`If joinder is granted, Petitioners agree to assume an “‘understudy’
`role” and “Petitioner Hyundai will assume the primary role, and the other
`petitioners will remain in their understudy role, only if Volkswagen ceases
`to participate in the Volkswagen IPR.” Id. at 8–9. Petitioners represent that
`“Patent Owner will not be required to provide any additional analysis or
`arguments beyond what it will already provide in responding to the
`Volkswagen Petition.” Id. at 7. Petitioners also submit that “[j]oinder of
`this proceeding with the Volkswagen IPR does not unduly burden or
`negatively impact the trial schedule in any meaningful way.” Id. at 8.
`Patent Owner does not oppose the Motion. Waiver 1. Petitioners aver
`that “Petitioner [Volkswagen] does not oppose the motion for joinder.”
`Mot. 3.
`For these reasons, we determine that joinder with the Volkswagen IPR
`is appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`V. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 12–16 of the ’405 Patent is instituted with respect to all
`grounds set forth in the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), inter partes review of the ’405 patent shall commence
`on the entry date of this Decision, and notice is hereby given of the
`institution of a trial;
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`IPR2022-00224
`Patent 9,355,405 B2
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`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`00720 is granted, and Petitioners are hereby joined as petitioners in
`IPR2021-00720;
`FURTHER ORDERED that Petitioners will maintain a secondary role
`in the proceeding, unless and until the Volkswagen petitioner ceases to
`participate in the inter partes review;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2021-00720 (Paper 17) remains unchanged, and shall govern the joined
`proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2021-00720;
`FURTHER ORDERED that the case caption in IPR2021-00720 shall
`be changed to reflect joinder of Hyundai Motor America, Mazda Motor of
`America, Inc., Subaru of America, Inc., and Volvo Car USA, LLC as
`petitioners in accordance with the below example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00720.
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`9
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`Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: June 2, 2022
`
`
`Example Caption
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC., HYUNDAI MOTOR
`AMERICA, MAZDA MOTOR OF AMERICA, INC., SUBARU OF
`AMERICA, INC., and VOLVO CAR USA, LLC,
`Petitioners,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`____________
`
`IPR2021-007202
`Patent 9,355,405 B2
`____________
`
`
`
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`2 Hyundai Motor America, Mazda Motor of America, Inc., Subaru of
`America, Inc., and Volvo Car USA, LLC (IPR2022-00224) have been joined
`as petitioners in this proceeding.
`
`
`
`IPR2022-00224
`Patent 9,355,405 B2
`
`FOR PETITIONER:
`Ryan Yagura
`Ben Haber
`Nicholas Whilt
`Clarence Rowland
`Caitlin Hogan
`O’MELVENY & MYERS LLP
`ryagura@omm.com
`bhaber@omm.com
`nwhilt@omm.com
`crowland@omm.com
`chogan@omm.com
`
`Matthew Satchwell
`Paul Steadman
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`paul.steadman@dlapiper.com
`
`Lewis Hudnell, III
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`
`Nicolas Gikkas
`nsg@gikkaslaw.com
`
`FOR PATENT OWNER:
`
`John Scheibeler
`Jonathan Lamberson
`Ashley Brzezinski
`WHITE & CASE LLP
`jscheibeler@whitecase.com
`jonathan.lamberson@whitecase.com
`ashley.brzezinski@nelsonmullins.com
`
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`11
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