`571-272-7822
`
`
`
` Paper 11
`Date: September 9, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00718 (Patent 9,584,843 B2)
`IPR2021-00719 (Patent 9,294,806 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
` IPR2021-00721 (Patent 8,166,081 B2)1
`____________
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses an issue pertaining to all six cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. Other
`than as expressly authorized herein, the parties are not authorized to use this
`style heading for any subsequent papers.
`
`
`
`IPR2021-00712, IPR2021-00716, IPR2021-00718,
`IPR2021-00719, IPR2021-00720, IPR2021-00721
`
`
`A conference call in the above proceedings was held on September 8,
`2021, among respective counsel for Petitioner and Patent Owner, and
`Judges Arbes, Jung, and Trock. The call was requested by Petitioner to seek
`authorization to file a five-page reply to Patent Owner’s Preliminary
`Responses in these proceedings. Patent Owner argues in each Preliminary
`Response that we should exercise our discretion to deny the Petition under
`35 U.S.C. § 314(a) based on the state of five related district court cases
`involving the challenged patents, including StratosAudio, Inc. v. Volkswagen
`Group of America, Inc., Case No. 20-cv-01131 (W.D. Tex.) (“the
`Volkswagen case”). E.g., IPR2021-00712, Paper 6 at 4–22 (citing Apple
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”)).2
`Petitioner argued during the call that it did not address the issue of
`discretionary denial in the Petitions because it filed the Petitions only four
`months after service of the complaint in the Volkswagen case, prior to the
`district court setting a schedule and trial date, and when Petitioner’s motion
`to dismiss or transfer for improper venue in the Volkswagen case was
`pending. According to Petitioner, it could not anticipate the arguments made
`by Patent Owner regarding later events, including the district court issuing a
`Scheduling Order in July 2021. See Ex. 2006. Patent Owner opposed
`Petitioner’s request, asserting that its arguments in the Preliminary
`Responses were foreseeable based on the district court’s past scheduling
`practices. Patent Owner also argued that any stipulation offered by
`
`
`2 Patent Owner did not argue that we should exercise our discretion to deny
`the Petition under 35 U.S.C. § 314(a) based on the Fintiv factors in related
`Case IPR2021-00717. See IPR2021-00717, Paper 9.
`2
`
`
`
`
`
`IPR2021-00712, IPR2021-00716, IPR2021-00718,
`IPR2021-00719, IPR2021-00720, IPR2021-00721
`
`Petitioner with respect to the asserted grounds of unpatentability and the
`Volkswagen case is immaterial, given the other four district court cases with
`different defendants.
`We took the matter under advisement. Upon further consideration,
`we determine that there is good cause for a limited reply due to the timing of
`the related district court cases. See 37 C.F.R. § 42.108(c). In particular,
`no case schedule and no trial date had been set at the time Petitioner filed its
`Petitions. Petitioner could not have foreseen arguments based on timing that
`had not yet been established. To ensure that both parties are heard on the
`issue, we also authorize Patent Owner to file a sur-reply responding to
`Petitioner’s arguments. The reply and sur-reply are limited to the issue of
`discretionary denial under 35 U.S.C. § 314(a), and the parties are referred to
`Board decisions on that issue, including Fintiv; Sotera Wireless, Inc. v.
`Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)
`(precedential as to § II.A); Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 15 (PTAB May 13, 2020) (informative); and Sand Revolution II, LLC
`v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24
`(PTAB June 16, 2020) (informative). The parties may file relevant
`documents from the district court cases as exhibits with their reply and
`sur-reply if necessary.
`Finally, should any of the relevant facts pertaining to the district court
`cases change after the filing of the papers authorized herein, the parties may
`request another conference call to notify the Board.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner is authorized to file a reply in the instant
`proceedings, limited to five pages and addressing only the issue of
`
`
`
`3
`
`
`
`IPR2021-00712, IPR2021-00716, IPR2021-00718,
`IPR2021-00719, IPR2021-00720, IPR2021-00721
`
`discretionary denial under 35 U.S.C. § 314(a), by September 16, 2021;
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply, limited to five pages and responding to Petitioner’s reply, by
`September 23, 2021; and
`FURTHER ORDERED that the parties shall file a single reply and
`sur-reply in all six proceedings using a caption referring to all of the
`proceedings.
`
`
`
`
`4
`
`
`
`IPR2021-00712, IPR2021-00716, IPR2021-00718,
`IPR2021-00719, IPR2021-00720, IPR2021-00721
`
`FOR PETITIONER:
`
`Eric S. Lucas
`David J. Cooperberg
`SHEARMAN & STERLING LLP
`eric.lucas@shearman.com
`david.cooperberg@shearman.com
`
`
`FOR PATENT OWNER:
`
`John Scheibeler
`Jonathan Lamberson
`Ashley T. Brzezinski
`WHITE & CASE LLP
`jonathan.lamberson@whitecase.com
`ashley.brzezinski@whitecase.com
`
`
`
`
`
`
`
`5
`
`