`
`Trials@uspto.gov Paper 10
`571-272-7822 Entered: June 2, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAZDA MOTOR OF AMERICA, INC.,
`SUBARU OF AMERICA, INC., and VOLVO CAR USA, LLC,
`Petitioners,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`____________
`
`IPR2022-00203
`Patent 8,166,081 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
`
`
`
`
`
`
`IPR2022-00203
`Patent 8,166,081 B2
`
`
`INTRODUCTION
`I.
`Petitioners, 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 9–11 and 23 (the “challenged claims”)
`of U.S. Patent No. 8,166,081 B2 (Ex. 1001, “the ’081 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 IPR2021-00721 (“the Volkswagen IPR”). Paper 5
`(“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 9, 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 (W.D. Tex.);
`StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 20-cv-01126 (W.D.
`Tex.); StratosAudio, Inc. v. Volkswagen Group of America, Inc., No. 20-cv-
`01127 (W.D. Tex.); StratosAudio, Inc. v. Subaru of America, Inc., No. 20-
`cv-01128 (W.D. Tex.); StratosAudio, Inc. v. Volvo Cars USA, LLC, No. 20-
`cv-01129 (W.D. Tex.); StratosAudio, Inc. v. Volkswagen Group of America,
`Inc., No. 20-cv-01131 (W.D. Tex.); IPR2021-00720 (PTAB Apr. 16, 2021);
`IPR2021-00721 (PTAB Apr. 16, 2021); and IPR2021-01267 (PTAB Jul. 16,
`
`2
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`IPR2022-00203
`Patent 8,166,081 B2
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`2021). Pet. 2; Paper 6, 1–2.
`
`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 6, 2.
`B. The ’081 Patent
`The ’081 Patent relates to media advertising and associating an
`advertising media signal with another media signal. Ex. 1001, 1:18–20. The
`’081 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 1:22–30. In view of this,
`the ’081 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 1:31–34.
`The ’081 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 3:8–12. The ’081
`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 3:16–20.
`The ’081 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 3:27–29. A media
`association system analyzes the song to determine what media elements can
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`IPR2022-00203
`Patent 8,166,081 B2
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`be associated with the song and the media association system provides a
`second media signal (e.g., an advertisement) to the user enabled-device. Id.
`at 3:30–33. 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 3:37–39. The ’081
`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 3:41–47.
`C. Evidence
`Petitioners rely upon the following evidence in the Petition.
`(1) U.S. Patent No. US 6,349,329 B1, issued Feb. 19, 2002
`(“Mackintosh”) (Ex. 1004);
`(2) U.S. Patent Application Publication No. 2005/0262542 A1,
`published Nov. 24, 2005 (“DeWeese”) (Ex. 1005); and
`(3) Declaration of Tim A. Williams, Ph.D. (Ex. 1003).
`See Pet. 16–82.
`
`4
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`
`D. Asserted Grounds of Unpatentability
`Petitioners assert the following grounds of unpatentability in the
`Petition.
`Grounds
`1, 2
`
`Prior Art
`Mackintosh
`
`3, 4
`
`DeWeese
`
`Pet. 4.
`
`Basis Claims Challenged
`§102,
`9–11, 23
`§103
`§102,
`§103
`
`9–11, 23
`
`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
`9–11 and 23 of the ’081 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, 50.
`
`5
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`IPR2022-00203
`Patent 8,166,081 B2
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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, 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 the challenged claims of the ’081 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 ’081 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.
`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).
`
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`IPR2022-00203
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`
`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 22, 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. 5–7. 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
`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 “[a]ssume a second-chair
`role while Volkswagen remains in the proceeding.” Id. at 6. Petitioners
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`IPR2022-00203
`Patent 8,166,081 B2
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`represent that “Patent Owner should not require any discovery beyond that
`which it may need in the Volkswagen IPR.” Id. Petitioners also submit that
`“joinder would not adversely impact the trial schedule, briefing, or discovery
`in the Volkswagen IPR.” Id. at 8.
`Patent Owner does not oppose the Motion. Waiver, 1. Petitioners
`aver that “[t]he petitioner in the Volkswagen IPR (‘Volkswagen’) does not
`oppose Petitioner’s request for joinder.” Mot. 1.
`For these reasons, we determine that joinder with the Volkswagen IPR
`is appropriate under the circumstances. Accordingly, we grant Petitioners’
`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 9–11 and 23 of the ’081 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 ’081 Patent shall commence
`on the entry date of this Decision, and notice is hereby given of the
`institution of a trial;
`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`00721 is granted, and Petitioners are hereby joined as petitioners in
`IPR2021-00721;
`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;
`
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`IPR2022-00203
`Patent 8,166,081 B2
`
`
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2021-00721 (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 IPR2021-00721;
`FURTHER ORDERED that the case caption in IPR2021-00721 shall
`be changed to reflect joinder of 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 IPR2021-00721.
`
`9
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`Trials@uspto.gov Paper 10
`571-272-7822 Entered: June 2, 2022
`
`Example Caption
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC., MAZDA MOTOR OF
`AMERICA, INC., SUBARU OF AMERICA, INC., and VOLVO CAR
`USA, LLC,
`Petitioners,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`____________
`
`IPR2021-007212
`Patent 8,166,081 B2
`____________
`
`
`
`
`2 Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo Car
`USA, LLC (IPR2022-00203) have been joined as petitioners in this
`proceeding.
`
`
`
`IPR2022-00203
`Patent 8,166,081 B2
`
`FOR PETITIONERS:
`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
`ng@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
`
`
`11
`
`
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