Case No. IPR2021-01267
`U.S. Patent No. 8,166,081
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`HYUNDAI MOTOR AMERICA,
`Petitioner
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`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
`_____________
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`Case No. IPR2021-01267
`Patent No. 8,166,081
`_____________
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`PETITIONER’S RESPONSIVE BRIEF TO PATENT OWNER’S
`SUPPLEMENTAL BRIEF PURSUANT TO
`AUTHORIZATION BY THE BOARD
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`U.S. Patent No. 8,166,081
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`
`
`
`HYUNDAI MOTOR AMERICA,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`_____________
`
`Case No. IPR2021-01267
`Patent No. 8,166,081
`_____________
`
`PETITIONER’S RESPONSIVE BRIEF TO PATENT OWNER’S
`SUPPLEMENTAL BRIEF PURSUANT TO
`AUTHORIZATION BY THE BOARD
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`
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`Case No. IPR2021-01267
`U.S. Patent No. 8,166,081
`Whatever Subaru said in its motion to strike (Ex. 2018), filed in a district court
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`action not involving Petitioner,1 is inadmissible hearsay and useless as evidence of
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`claim construction. Moreover, Patent Owner mischaracterizes the hearing transcript,
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`implying that the district court endorsed Patent Owner’s construction for limitation
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`9[c] of the ’081 Patent in that separate action. It did not. Finally, Patent Owner’s
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`reliance on its own self-serving arguments from that separate proceeding are
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`inadmissible hearsay. Accordingly, the Board should disregard Patent Owner’s
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`Supplemental Brief (Paper 31) and new Exhibits 2018-2021 in the current case,
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`IPR2021-01267. They are inadmissible and irrelevant.
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`First, contrary to Patent Owner’s suggestion, the district court did not “adopt”
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`any understanding of the claims in ruling on Subaru’s motion to strike. The district
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`court was not asked to determine which party’s construction is correct and, in fact,
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`did not make such a determination. Rather, the district court considered whether the
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`experts’ infringement and validity opinions for limitation 9[c] permissibly applied a
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`“plain and ordinary meaning” for the term.2 The result of the motion was merely that
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`each expert would be allowed to offer its respective, conflicting opinions. The
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`hearing transcript does not reflect any determination or endorsement on claim
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`construction. Instead, it expressly states that the court is not construing the claims.
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`1 StratosAudio, Inc. v. Subaru of Am., Inc., No. 6:20-cv-01128 (W.D. Tex. 2020).
`2 See Ex-2018, 1 (Subaru arguing that StratosAudio’s experts’ “arguments go far
`beyond simply elucidating the plain and ordinary meaning of any term”).
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`1
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`Case No. IPR2021-01267
`U.S. Patent No. 8,166,081
`Ex-2021, 21:5-11 (“I’m convinced that the discussions regarding both the output and
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`the location are reasonable expert explanation of how a person of ordinary skill in
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`the art would understand the phrases in the claims to be met and not to be -- and is
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`not claim construction that would require the Court to conduct any further
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`construction.” (emphasis added)). This non-construction is not evidence of
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`construction. Accordingly, Patent Owner’s request that the “Board adopt the same
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`understanding as the district court when it interprets claim 9 of the ’081 patent” here
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`(Paper 31 at 4) makes no sense in a different proceeding addressing different facts.3
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`Second, Patent Owner seeks to rely on statements made by non-parties Subaru
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`or Volkswagen (“VW”) in another proceeding. They are inadmissible hearsay here.
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`Subaru’s or VW’s statements are not reflective of the views of either party in this
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`case and are thus irrelevant. The parties in this case have argued that no term requires
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`construction, and the Board agreed. Paper 2 at 10-11; Paper 9 at 20-21; Paper 17 at
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`14. What is relevant here are Petitioner’s arguments for limitation 9[c], including
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`that Patent Owner’s expert agreed with Petitioner’s position during his deposition in
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`this case. Paper 20 at 13-16. Non-party arguments from different cases with different
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`facts are simply irrelevant to claim construction.
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`Finally, Patent Owner’s own self-serving statements in Subaru’s and VW’s
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`3 Subaru’s objections to the magistrate judge’s report and recommendation were
`not resolved before settlement, so the issue was not finally resolved. See No. 6:20-
`cv-01128, Dkt. No. 156 (objections), Dkt. No. 161 (order canceling trial).
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`2
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`Case No. IPR2021-01267
`U.S. Patent No. 8,166,081
`proceedings, which it relies on to bolster its position here, are textbook hearsay. They
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`are not admissible statements against interest offered against an opposing party. Fed.
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`R. Evid. 801(d)(2). The arguments that Patent Owner has made, and that Petitioner
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`has had the opportunity to address, are in this proceeding, not in the Subaru or VW
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`proceedings. Patent Owner’s request that the Board “adopt” a new, unbriefed claim
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`construction based on hearsay could only lead to reversible error. SAS Inst., Inc. v.
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`ComplementSoft, LLC, 825 F.3d 1341, 1351-52 (Fed. Cir. 2016) (“an agency may
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`not change theories in midstream without giving respondents reasonable notice of
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`the change” and “the opportunity to present argument under the new theory”), rev’d
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`on other grounds, SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348 (2018). Further, Patent
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`Owner’s reference to “case law” from the district court action “demonstrating it was
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`improper to change the word ‘or’ to ‘and/or’” should be disregarded, as no such
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`“case law” was included in Patent Owner’s Response or Sur-Reply. This is merely
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`a tardy attempt to improperly expand Patent Owner’s page limit, incorporate
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`additional briefing by reference, and deprive Petitioner an opportunity to respond.
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`This
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`irrelevant hearsay should be disregarded. Importantly,
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`this
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`is
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`substantially different than the issues raised by Petitioner in IPR2021-01303 and -
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`01305. These involved offering Patent Owner’s own statements and admissions
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`against interest, which are not hearsay (Fed. R. Evid. 801(d)(2)) and are relevant to
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`claim construction (35 U.S.C. §301(a)(2)).
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`3
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`Case No. IPR2021-01267
`U.S. Patent No. 8,166,081
`CERTIFICATE OF SERVICE
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`The undersigned certifies pursuant to 37 C.F.R. §§ 42.6(e) and 42.105 that
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`on September 30, 2022, a true and correct copy of Petitioner’s Responsive Brief to
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`Patent Owner’s Supplemental Brief Pursuant to Authorization by the Board was
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`served by filing this document through the PTAB E2E System, as well as
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`delivering a copy via electronic mail upon the following attorneys of record for
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`Patent Owner:
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`John Scheibeler, Reg. No. 35,346
`White & Case LLP
`1221 Avenue of the Americas
`New York, NY 10020-1095
`Phone: 212-819-8200
`jscheibeler@whitecase.com
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`Jonathan Lamberson, Reg. No. 57,352
`White & Case LLP
`2 Palo Alto Square, Suite 900
`3000 El Camino Real
`Palo Alto, California 94306-2109
`Phone: 650-213-0384
`jonathan.lamberson@whitecase.com
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`Ashley T. Brzezinski, Reg. No.
`58,651
`White & Case LLP
`75 State Street
`Boston, MA 02109
`Phone: 617-979-9344
`ashley.brzezinski@whitecase.com
`Hallie Kiernan
`White & Case LLP
`1221 Avenue of the Americas
`New York, NY 10020-1095
`Phone: 212-819-8200
`hallie.kiernan@whitecase.com
`WCStratosAudioIPR@whitecase.com
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`Respectfully submitted,
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`/s/ Ryan K. Yagura
`Ryan K. Yagura (Reg. No. 47,191)
`E-Mail: ryagura@omm.com
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Telephone: (213) 430-6000
`Attorney for Petitioner
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