`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`MAZDA MOTOR OF AMERICA, INC., VOLVO CAR USA, LLC, AND
`SUBARU OF AMERICA, INC.,
`Petitioner
`
`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
`
`Case No. IPR2022-00203
`U.S. Patent No. 8,166,081
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Mazda Motor of
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`America, Inc., Volvo Car USA, LLC, and Subaru of America, Inc. (“Petitioner”)
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`move for joinder with the Inter Partes Review of U.S. Patent No. 8,166,081 (“the
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`’081 Patent”), Volkswagen Group of America, Inc. v. StratosAudio, Inc., IPR2021-
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`00721 (“the Volkswagen IPR”), for which the petition for Inter Partes Review was
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`filed on April 16, 2021, and was instituted for trial on October 22, 2021. IPR2021-
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`00721, paper 16. This motion is timely because it is filed within one month of the
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`Board’s decision instituting trial in the Volkswagen IPR, i.e., “no later than one
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`month after the institution date” of the Volkswagen IPR. 37 C.F.R. § 42.122(b);
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`Central Security Group – Nationwide, Inc. v. Ubiquitous Connectivity, LP,
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`IPR2019-01609, Paper 11, at 8-9 (P.T.A.B. Feb. 26, 2020) (stating that § 42.122(b)
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`is “[t]he only timing requirement for a motion for joinder”). The petitioner in the
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`Volkswagen IPR (“Volkswagen”) does not oppose Petitioner’s request for joinder.
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`Petitioner requests institution of this Petition for Inter Partes Review. This
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`Petition is substantively identical to the original Volkswagen IPR petition in all
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`material respects. The only substantive changes are in the Introduction to identify
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`the correct Petitioner, and in mandatory notices under 37 C.F.R. § 42.8(b). The
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`Petition here and the Volkswagen IPR petition challenge the same claims of the ’081
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`patent on the same grounds relying on the same prior art and evidence, including a
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`declaration identical in substance from the same expert.
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`Thus, the Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
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`§ 315(c) permits Petitioner’s joinder to the Volkswagen IPR.
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`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in the
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`Volkswagen IPR and coordinate all filings with Volkswagen in the Volkswagen IPR.
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`Volkswagen will maintain the lead role in the proceedings so long as it is a party to
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`the proceedings and is not estopped under § 315(e)(1), and Petitioner here will
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`assume an understudy role. Petitioner will only assume the lead role in the
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`proceedings if Volkswagen is no longer a party to the proceedings or unable to
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`advance arguments for one or more claims, or grounds, for example, because of §
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`315(e)(1). Petitioner agrees to consolidated filings for all substantive papers in the
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`proceeding. Volkswagen and Petitioner will be jointly responsible for the
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`consolidated filings. Absent a Board order precludingVolkswagen from making
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`arguments that would otherwise be available to Petitioner, Petitioner will not
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`advance any arguments separate from those advanced by Volkswagen in the
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`consolidated filings. These limitations will avoid lengthy and duplicative briefing.
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`Also, Petitioner will not seek additional depositions or deposition time, and will
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`coordinate deposition questioning and hearing presentations with Volkswagen.
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`Petitioner agrees to the foregoing conditions even if other IPRs filed by other, third-
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`party petitioners are joined with the Volkswagen IPR.
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`Joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Volkswagen
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`IPR for all interested parties. Further, the Patent Owner has asserted the ’081 patent
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`in district court against Petitioner. Joinder will estop Petitioner from asserting in
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`district court those issues resolved in a final decision from the Volkswagen IPR, thus
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`narrowing the issues in the district court. See 35 U.S.C. § 315(e)(2). Finally, joinder
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`would not complicate or delay the Volkswagen IPR and would not adversely affect
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`any schedule set in that proceeding. In sum, joinder would promote efficient
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`adjudication in multiple forums. On the other hand, maintaining the Petitioner’s IPR
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`proceeding separate from that of the Volkswagen IPR would entail needless
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`duplication of effort.
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`Joinder will not unduly prejudice any party. Because joinder will not add any
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`new substantive issues, delay the schedule, burden deponents, or increase needless
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`filings, any additional costs on the Patent Owner would be minimal. On the other
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`hand, denial of joinder would prejudice Petitioner. Their interests may not be
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`adequately protected
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`in
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`the Volkswagen IPR proceedings, particularly if
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`Volkswagen settles with the Patent Owner. Petitioner should be allowed to join in
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`a proceeding affecting a patent asserted against them.
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS
`StratosAudio, Inc. (the “Patent Owner”) is the owner of the ’081 patent.
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`StratosAudio, Inc. has asserted the ’081 patent against Petitioner in StratosAudio,
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`Inc. v. Mazda Motor of America, Inc. No. 6:20-cv-1126 and StratosAudio, Inc. v.
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`Subaru of America, Inc. No. 6:20-cv-1128, and StratosAudio, Inc. v. Volvo Cars of
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`North America, LLC et al., No. 6:20-cv-01129, pending in the United States District
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`Court for the Western District of Texas. On April 16, 2021, Volkswagen filed its
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`IPR petition, IPR2021-00721, against the ’081 patent. On October 22, 2021, trial
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`was instituted on all proposed grounds, finding that a reasonable likelihood existed
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`that Volkswagen’s petition for inter partes review would prevail in showing
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`unpatentability of claims 12-16 of the ʼ081 Patent. See IPR2021-00720, Decision
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`Instituting IPR Review, Paper No. 16. Petitioner hereby timely moves for joinder
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`with the Volkswagen IPR.
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`III.
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`STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A.
`Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an IPR
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`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
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`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
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`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326, Paper
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`15, at 3-4; Motorola Mobility LLC v. Proxyconn, Inc., IPR2013-00109, Paper 15, at
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`3-4. “The Board will determine whether to grant joinder on a case-by-case basis,
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`taking into account the particular facts of each case, substantive and procedural
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`issues, and other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movant
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`bears the burden of proof in establishing entitlement to the requested relief. 37
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`C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should:
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`(1) set forth the reasons why joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review; and (4) address specifically how briefing and discovery may be
`simplified.
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`Dell, IPR2013-00385, Paper 19, at 4.
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`B.
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`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
`The Petition is based on the same grounds and combinations of prior art that
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`are at issue in the Volkswagen IPR. For simplicity and efficiency, Petitioner has
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`substantially copied the substance of Volkswagen’s petition and accompanying
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`declaration. Petitioner does not seek to introduce grounds or claims not in the
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`Volkswagen IPR and seeks only to join the proceeding as instituted. Petitioner
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`submits an identical expert declaration as in the Volkswagen IPR. The Patent Owner
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`should not require any discovery beyond that which it may need in the Volkswagen
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`IPR—nor should the Board permit any. The Petition presents no new substantive
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`issues relative to the Volkswagen IPR and does not seek to broaden the scope of the
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`Volkswagen IPR.
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`For efficiency’s sake, Petitioner will:
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`1. Adhere to all applicable deadlines in the Volkswagen IPR;
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`2. Submit “consolidated” filings with the Volkswagen, as set forth above
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`in the statement of precise relief requested;
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`3. Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`4. Refrain from requesting or reserving additional oral hearing time; and
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`5. Assume a second-chair role while Volkswagen remains in the
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`proceeding.1
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`1 These limitations are consistent with previously granted joinder motions. See, e.g.,
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`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
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`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
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`In view of these provisions, joinder should not affect the trial schedule.
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`C.
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`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioner presents substantially identical arguments and supporting evidence
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`as the Volkswagen IPR. Joinder will simplify briefing and discovery. Given that
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`the Volkswagen IPR and the Petition address the same prior art and grounds for
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`rejection of the same claims, joining these proceedings allows for joint submissions
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`and discovery, further streamlining the proceedings. This should promote efficiency
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`and conserve the Board’s and the parties’ resources. Further, joinder will estop
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`Petitioner from asserting in district court those issues resolved in a final written
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`decision in the Volkswagen IPR, thus narrowing the issues in the district court
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`actions. See 35 U.S.C. § 315(e)(2).
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`Joinder is Appropriate
`D.
`The Board has previously stated that it is “mindful of a policy preference for
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`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
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`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
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`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
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`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the basis of a petition, for example, a party that files an identical petition
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`will be joined to that proceeding, and thus allowed to file its own briefs and make
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`its own arguments.”)).
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`Here, because Petitioner seeks institution on the grounds, evidence, and
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`arguments advanced, or that will be advanced, in the Volkswagen IPR, institution is
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`warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Volkswagen IPR is
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`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
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`asserted. As explained above, joinder would not adversely impact the trial schedule,
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`briefing, or discovery in the Volkswagen IPR, and the remaining equities compel
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`joinder.
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`Petitioner is filing this Petition and joinder motion to ensure that the trial is
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`completed if Volkswagen reaches settlement with Patent Owner.
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`1. Without joinder, Petitioner will be prejudiced
`A denial of joinder would prejudice Petitioner. Its substantial interests, as
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`parties against whom the ’081 patent has been asserted in federal district court
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`actions, may not be adequately protected by Volkswagen in the Volkswagen IPR
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`proceedings. For example, Petitioner has an interest that the Volkswagen IPR reach
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`a final written decision to facilitate a timely and cost-effective end to the controversy
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`between Petitioner and the Patent Owner. Petitioner should be allowed to join in a
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`proceeding affecting a patent asserted against it.
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`Joinder will not unduly prejudice any party
`2.
`The Petition raises issues already before the Board and long known to the
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`Patent Owner. Addressing patent validity in this proceeding serves the parties’ and
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`Board’s interests.
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`IV. GENERAL PLASTIC IS INAPPLICABLE
`Petitioner respectfully submits application of the General Plastic analysis is
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`inapplicable here. In General Plastic, the Board set forth a series of factors that may
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`be analyzed for follow-on petitions to help conserve the finite resources of the Board.
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`Here, both Petitioner and Volkswagen submitted separate, independent petitions. In
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`the current motion, Petitioner merely seeks to join Volkswagen’s petition and does
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`not present any new grounds. As such, Petitioner respectfully submits that General
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`Plastic does not apply in this circumstance because Petitioner would be taking an
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`understudy role and the Board’s finite resources would not be impacted. Moreover,
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`a joinder petition in these circumstances is not the type of serial petition to which
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`General Plastic applies, as there is no strategic advantage to be gained by filing this
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`additional petition, and there are no concerns of “road mapping” the Patent Owner’s
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`strategy because Petitioner has submitted a petition that is substantively identical to
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`Volkswagen’s petition. See AT&T Services, Inc. v. Broadband iTV, Inc., IPR2021-
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`00649, Paper 12 at 7-17 (August 25, 2021) (instituting IPR on a “me-too” petition
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`despite being filed after the PTAB’s institution decision on the primary petition.
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`In the event the Board does analyze the General Plastic factors, those factors
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`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co.,
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`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16 (PTAB Sept. 6,
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`2017) (Paper 19) (precedential as to § II.B.4.i).
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`The first factor is whether the same petitioner previously filed a petition
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`directed to the same claims of the same patent. Petitioner has not previously filed a
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`petition against the ’081 Patent. Accordingly, this factor weighs in favor of
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`institution.
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`The second factor is whether at the time of filing the first petition the petitioner
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`knew or should have known of the prior art asserted in the second petition. This
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`factor is neutral, if not inapplicable, in the General Plastic analysis. Here,
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`Volkswagen’s petition and Petitioner’s Petition share the same prior art because
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`Petitioner’s Petition is a “copy” of Volkswagen’s petition. Because Petitioner is
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`merely seeking to join in an understudy role, the factor is neutral, at best, in
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`determining whether to institute.
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`The third factor is whether at the time of filing of the second petition the
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`petitioner already received the patent owner’s preliminary response to the first
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`petition or received the Board’s decision on whether to institute review in the first
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`petition. The Board entered its decision to institute review on the IPR on October
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`22, 2021. Further, because the present Petition is essentially a copy of the prior
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`Volkswagen Petition and submitted with a motion for joinder stating that Petitioner
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`will serve an understudy role, the Petition is not an attempt to harass the Patent
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`Owner or otherwise engage in serial, tactical filings. Thus, this factor weighs against
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`denial of joinder/institution.
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`The fourth factor is the length of time elapsed between the time the petitioner
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`learned of the prior art asserted in the second petition and filing of the second
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`petition, and the fifth factor is whether the petitioner provides adequate explanation
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`for the time elapsed between the filings of multiple petitions directed to the same
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`claims of the same patent. Petitioner files its Petition and this joinder motion within
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`the time period allowed under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b). In the
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`context of a joinder motion where Petitioner will be taking an understudy role, the
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`fourth and fifth factors are inapplicable.
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`The sixth factor is the finite resources of the Board. Allowing Petitioner’s
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`joinder motion where it will serve in an understudy role will not impact the Board’s
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`resources beyond those resources the Board dedicates to the instant joinder motion.
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`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
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`final determination not later than 1 year after the date on which the Director notices
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`institution of review. As noted above, joining Petitioner should not impact the
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`schedule. Accordingly, this factor weighs in favor of institution.
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`An eighth factor identified by the Board in Shenzhen is the extent to which
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`the petitioner and any prior petitioner(s) were similarly situated defendants or
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`otherwise realized a similar-in-time hazard regarding the challenged patent.
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`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898,
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`Paper 9 at 7, 13-14 (PTAB Oct. 1, 2018) (noting “the purpose of proposed Factor 8
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`is to discourage tactical filing of petitions over time by parties that faced the same
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`threat at the same time” such that earlier petitions are filed as “test case(s)” to gain
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`“tactical advantage”). Because Petitioner’s Petition does not introduce any new
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`grounds of unpatentability and will effectively merge into a single proceeding with
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`Volkswagen’s IPR, no such tactical advantage is gained here.
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`Thus, none of the General Plastic factors weighs against institution and
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`joinder in this situation.
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`V.
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`CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the
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`Volkswagen IPR. Petitioner files this motion under the statutory joinder provisions
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`as contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`For the foregoing reasons, Petitioner respectfully requests inter partes review
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`of U.S. Patent No. 8,166,081 and joinder with Volkswagen v. StratosAudio, Inc.,
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`IPR2021-00721.
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`Dated: November 22, 2021
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`Respectfully submitted,
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`
`By:/ Matthew D. Satchwell /
`Matthew D. Satchwell (Reg. No. 58,870)
`Email: matthew.satchwell@dlapiper.com
`DLA Piper LLP (US)
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606
`Telephone: (312) 368-2111
`Fax: (312) 236-7516
`
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned hereby
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`certifies that a copy of the foregoing Motion for Joinder was served on November
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`22, 2021, by agreement, via electronic service upon the following counsel for Patent
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`Owner:
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`Jonathan J. Lamberson (Lamberson@whitecase.com)
`Michael J. Songer (Michael.Songer@whitecase.com)
`Daniel S. Sternberg (Dan.Sternberg@whitecase.com)
`Henry Yee-Der Huang (Henry.Huang@whitecase.com)
`WCStratosAudioWDTXLitigation@whitecase.com
`Corby Vowell (Vowell@fsclaw.com)
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`In addition, a copy of this Motion for Joinder and supporting material is
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`being electronically served in its entirety on counsel for Petitioner in related Case
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`No. IPR2021-00721.
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`Eric S. Lucas (eric.lucas@shearman.com)
`David J. Cooperberg (eric.lucas@shearman.com)
`VW-Stratos@Shearman.com
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`Dated: November 22, 2021
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`Respectfully submitted,
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`By:/ Matthew D. Satchwell /
`Matthew D. Satchwell (Reg. No. 58,870)
`Email: matthew.satchwell@dlapiper.com
`DLA Piper LLP (US)
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606
`Telephone: (312) 368-2111
`Fax: (312) 236-7516
`
`Counsel for Petitioner
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