Paper 57
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: October 20, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC., HYUNDAI MOTOR
`AMERICA, and SUBARU OF AMERICA, INC.,1
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`____________
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`
`PER CURIAM.
`
`1 Mazda Motor of America, Inc. (“Mazda”), Subaru of America, Inc.
`(“Subaru”), and Volvo Car USA, LLC (“Volvo”) filed a motion for joinder
`and a petition in Cases IPR2022-00203, IPR2022-00204, and
`IPR2022-00205, which were granted, and, therefore, were joined as
`petitioners in Cases IPR2021-00721, IPR2021-00716, and IPR2021-00712,
`respectively. The same three petitioners, along with Hyundai Motor
`America (“Hyundai”), filed a motion for joinder and a petition in
`Case IPR2022-00224, which were granted, and, therefore, were joined as
`petitioners in Case IPR2021-00720. The proceedings subsequently were
`terminated as to Mazda and Volvo due to settlement. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: October 20, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC., HYUNDAI MOTOR
`AMERICA, and SUBARU OF AMERICA, INC.,1
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`____________
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`
`PER CURIAM.
`
`1 Mazda Motor of America, Inc. (“Mazda”), Subaru of America, Inc.
`(“Subaru”), and Volvo Car USA, LLC (“Volvo”) filed a motion for joinder
`and a petition in Cases IPR2022-00203, IPR2022-00204, and
`IPR2022-00205, which were granted, and, therefore, were joined as
`petitioners in Cases IPR2021-00721, IPR2021-00716, and IPR2021-00712,
`respectively. The same three petitioners, along with Hyundai Motor
`America (“Hyundai”), filed a motion for joinder and a petition in
`Case IPR2022-00224, which were granted, and, therefore, were joined as
`petitioners in Case IPR2021-00720. The proceedings subsequently were
`terminated as to Mazda and Volvo due to settlement. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`
`ORDER
`Adjusting One-Year Pendency Due to Joinder
`35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c)
`
`
`On October 25, 2021, we instituted an inter partes review of
`claims 11 and 15–18 of U.S. Patent No. 8,903,307 B2 (“the ’307 patent”),
`based on a petition filed by Volkswagen Group of America, Inc.
`(“Volkswagen”), in Case IPR2021-00712 (Paper 16). On May 11, 2022,
`we joined Mazda, Subaru, and Volvo, who filed a petition in
`Case IPR2022-00205, as petitioners in the proceeding (Paper 36).
`On October 25, 2021, we instituted an inter partes review of
`claims 11, 14–16, and 18 of U.S. Patent No. 8,688,028 B2
`(“the ’028 patent”), based on a petition filed by Volkswagen, in
`Case IPR2021-00716 (Paper 16). On May 11, 2022, we joined Mazda,
`Subaru, and Volvo, who filed a petition in Case IPR2022-00204,
`as petitioners in the proceeding (Paper 36).
`On October 22, 2021, we instituted an inter partes review of
`claims 12–16 of U.S. Patent No. 9,355,405 B2, based on a petition filed by
`Volkswagen, in Case IPR2021-00720 (Paper 16). On June 2, 2022,
`we joined Hyundai, Mazda, Subaru, and Volvo, who filed a petition in
`Case IPR2022-00224, as petitioners in the proceeding (Paper 39).
`On October 22, 2021, we instituted an inter partes review of
`claims 9–11 and 23 of U.S. Patent No. 8,166,081 B2 (“the ’081 patent”),
`based on a petition filed by Volkswagen, in Case IPR2021-00721
`(Paper 16). On June 2, 2022, we joined Mazda, Subaru, and Volvo, who
`
`2
`
`
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`filed a petition in Case IPR2022-00203, as petitioners in the proceeding
`(Paper 37).
`The ’307 patent, ’028 patent, and ’081 patent challenged in these
`proceedings are also the subject of pending Cases IPR2021-01305,
`IPR2021-01303, and IPR2021-01267, respectively, filed by Hyundai.
`Pursuant to 35 U.S.C. § 316(a)(11), “the final determination in an
`inter partes review [shall] be issued not later than 1 year after the date on
`which the Director notices the institution of a review under this chapter,
`except that the Director . . . may adjust the time periods in this paragraph in
`the case of joinder under section 315(c).” The Director has delegated the
`authority to adjust the one-year period to the Board. See 37 C.F.R.
`§ 42.100(c). In particular, 37 C.F.R. § 42.100(c) provides that “[a]n inter
`partes review proceeding shall be administered such that pendency before
`the Board after institution is normally no more than one year. The time can
`be . . . adjusted by the Board in the case of joinder.”
`In accordance with 37 C.F.R. § 42.100(c), we adjust the time of
`pendency before the Board in the present proceedings, which involve
`joinder, to permit the Board to consider and determine the pending issues.
`The Board shall issue Final Written Decisions in these proceedings no later
`than January 25, 2023.
`In consideration of the foregoing, it is hereby:
`ORDERED that the time of pendency in these proceedings, which
`involve joinder, is adjusted beyond one year after institution; and
`FURTHER ORDERED that the Board shall issue Final Written
`Decisions in these proceedings no later than January 25, 2023.
`
`3
`
`
`
`
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`FOR PETITIONER VOLKSWAGEN GROUP OF AMERICA, INC.:
`
`Michael D. Specht
`Ryan C. Richardson
`Daniel S. Block
`Daniel E. Yonan
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`mspecht-ptab@sternekessler.com
`rrichardson-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`dyonan-ptab@sternekessler.com
`
`FOR PETITIONER SUBARU OF AMERICA, INC.:
`
`Matthew D. Satchwell
`Paul R. Steadman
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`paul.steadman@dlapiper.com
`
`Lewis E. Hudnell, III
`Nicolas S. Gikkas
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`nsg@gikkaslaw.com
`
`
`
`
`
`4
`
`
`
`IPR2021-00712 (Patent 8,903,307 B2)
`IPR2021-00716 (Patent 8,688,028 B2)
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`FOR PETITIONER HYUNDAI MOTOR AMERICA:
`
`Ryan Yagura
`Nicholas J. Whilt
`Benjamin Haber
`Clarence A. Rowland
`Caitlin Hogan
`O’MELVENY & MYERS LLP
`ryagura@omm.com
`nwhilt@omm.com
`bhaber@omm.com
`crowland@omm.com
`chogan@omm.com
`
`Matthew D. Satchwell
`Paul R. Steadman
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`paul.steadman@dlapiper.com
`
`Lewis E. Hudnell, III
`Nicolas S. Gikkas
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`nsg@gikkaslaw.com
`
`FOR PATENT OWNER:
`
`John Scheibeler
`Jonathan Lamberson
`Hallie Kiernan
`WHITE & CASE LLP
`jscheibeler@whitecase.com
`jonathan.lamberson@whitecase.com
`hallie.kiernan@whitecase.com
`
`5
`
`
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