Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: May 11, 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,
`Petitioner,
`v.
`STRATOSAUDIO, INC.,
`Patent Owner.
`
`IPR2022-00204
`Patent 8,688,028 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`I.
`INTRODUCTION
`A. Background and Summary
`Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo
`Car USA, LLC (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`
`
`
`571-272-7822
`
`Paper 10
`Date: May 11, 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,
`Petitioner,
`v.
`STRATOSAUDIO, INC.,
`Patent Owner.
`
`IPR2022-00204
`Patent 8,688,028 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`I.
`INTRODUCTION
`A. Background and Summary
`Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo
`Car USA, LLC (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`
`
`
`
`IPR2022-00204
`Patent 8,688,028 B2
`requesting inter partes review of claims 11, 14–16, and 18 of U.S. Patent
`No. 8,688,028 B2 (Ex. 1001, “the ’028 patent”) pursuant to 35 U.S.C.
`§ 311(a). Concurrently, Petitioner filed a Motion for Joinder pursuant to
`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), seeking to be joined as a
`party to Volkswagen Group of America, Inc. v. StratosAudio, Inc.,
`Case IPR2021-00716 (“the Volkswagen IPR”), which also involves claims
`11, 14–16, and 18 of the ’028 patent. Paper 5 (“Mot.”). Patent Owner did
`not file an opposition to the Motion for Joinder and waived the filing of a
`preliminary response pursuant to 37 C.F.R. § 42.107(b). Paper 9.
`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
`inter partes review unless the information in the petition and preliminary
`response “shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons that follow, we determine that institution of inter
`partes review is warranted on the same grounds instituted in the Volkswagen
`IPR and grant Petitioner’s Motion for Joinder.
`
`
`B. Related Matters
`The parties indicate that the ’028 patent is the subject of the following
`district court cases: StratosAudio, Inc. v. Volkswagen Group of America,
`Inc., Case No. 6:20-cv-1131 (W.D. Tex.), StratosAudio, Inc. v. Hyundai
`Motor America, Case No. 6:20-cv-1125 (W.D. Tex.), StratosAudio, Inc. v.
`Mazda Motor of America, Inc., Case No. 6:20-cv-1126 (W.D. Tex.),
`StratosAudio, Inc. v. Subaru of America, Inc., Case No. 6:20-cv-1128
`(W.D. Tex.), and StratosAudio, Inc. v. Volvo Cars of North America, LLC,
`Case No. 6:20-cv-1129 (W.D. Tex.) (collectively, “the district court cases”).
`See Pet. 2; Paper 6, 1.
`
`2
`
`
`
`IPR2022-00204
`Patent 8,688,028 B2
`Petitioner filed a petition challenging claims of a patent related to the
`’028 patent and motion for joinder in Case IPR2022-00205. Other
`proceedings involving patents asserted in the district court cases are
`Cases IPR2021-00712 (instituted), the Volkswagen IPR (instituted),
`IPR2021-00717 (denied), IPR2021-00718 (denied), IPR2021-00719
`(denied), IPR2021-00720 (instituted), IPR2021-00721 (instituted),
`IPR2021-01267 (instituted), IPR2021-01303 (instituted), IPR2021-01305
`(instituted), IPR2021-01371 (instituted), IPR2022-00203 (pending), and
`IPR2022-00224 (pending).
`
`
`C. Illustrative Claim
`Challenged claim 11 of the ’028 patent is independent. Claims 14–16
`and 18 each depend directly from claim 11. Claim 11 recites:
`11. A method for correlating media content identifying
`data with at least one broadcast segment received by a
`communication device, the method comprising:
`receiving a broadcast stream comprising the at least one
`broadcast segment and associated media content;
`receiving a data stream associated with the broadcast
`stream, the data stream comprising, at a minimum, the media
`content identifying data, wherein the media content identifying
`data comprises at least one element;
`extracting the media content identifying data from the data
`stream, associating each media content identifying data element
`with at least one of a plurality of media content;
`storing in an electronic memory of the communication
`device, at a minimum, media content identifying data elements
`into identifying data aggregates, each identifying data aggregate
`associated with at least one of the plurality of media content and
`the at least one broadcast segment, wherein the at least one
`broadcast segment is corollary to the at least one of the plurality
`of media content; and
`
`3
`
`
`
`IPR2022-00204
`Patent 8,688,028 B2
`providing for presentation of at least a portion of the data
`elements stored in the electronic memory of the communication
`device, whereby the providing provides selective outputting,
`using an interface, of at least one of the following: the media
`content identifying data, the media content, the corollary
`broadcast segment, a temporal position of the corollary broadcast
`segment of the broadcast stream.
`
`
`D. Evidence
`Petitioner relies on the following prior art:
`U.S. Patent No. 6,317,784 B1, filed Sept. 29, 1998, issued
`Nov. 13, 2001 (Ex. 1005, “Mackintosh”); and
`U.S. Patent No. 5,579,537, issued Nov. 26, 1996
`(Ex. 1004, “Takahisa”).
`
`
`
`E. Prior Art and Asserted Grounds
`Petitioner asserts that claims 11, 14–16, and 18 of the ’028 patent are
`unpatentable on the following grounds:
`Claims Challenged
`35 U.S.C. §
`11, 14–16, 18
`102(b)1
`11, 14–16, 18
`103(a)
`
`Reference/Basis
`Takahisa
`Mackintosh
`
`
`
`II. ANALYSIS
`Joinder for purposes of an inter partes review is governed by
`35 U.S.C. § 315(c), which states:
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`challenged claims of the ’028 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103. See Pet. 4.
`
`4
`
`
`
`IPR2022-00204
`Patent 8,688,028 B2
`JOINDER.—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
`parties review under section 314.
`“To join a party to an instituted [inter partes review (IPR)], the plain
`language of § 315(c) requires two different decisions.” Facebook, Inc. v.
`Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First,
`the statute requires that the Director (or the Board acting through a
`delegation of authority) . . . determine whether the joinder applicant’s
`petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect
`joinder, § 315(c) requires the Director to exercise his discretion to decide
`whether to ‘join as a party’ the joinder applicant.” Id.
`
`
`A. Whether the Petition Warrants Institution
`Petitioner states that its Petition and accompanying declaration of
`Vijay Madisetti, Ph.D. (Exhibit 1003), are “substantively identical” to those
`filed by Volkswagen Group of America, Inc. (“Volkswagen”) in the
`Volkswagen IPR, with the only differences being the identification of
`Petitioner and mandatory notice information. See Pet. 1–2; Mot. 1–2.
`We previously instituted an inter partes review in the Volkswagen IPR. See
`IPR2021-00716, Paper 16 (“Dec. on Inst.”).
`We incorporate our previous analysis regarding the asserted grounds
`of unpatentability, and conclude that Petitioner has demonstrated a
`reasonable likelihood of prevailing with respect to at least one claim of the
`’028 patent challenged in the Petition for the same reasons. See Dec. on
`
`5
`
`
`
`IPR2022-00204
`Patent 8,688,028 B2
`Inst. 23–35. Therefore, we determine that the Petition warrants institution of
`inter partes review on all claims and all grounds asserted in the Petition.
`
`
`B. Whether to Join Petitioner as a Party to the Volkswagen IPR
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We
`determine whether to grant joinder on a case-by-case basis, taking into
`account the particular facts of each case, substantive and procedural issues,
`and other considerations. When exercising that discretion, we are mindful
`that patent trial regulations, including the rules for joinder, must be
`construed to secure the just, speedy, and inexpensive resolution of every
`proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). As such, any
`motion for joinder must be filed “no later than one month after the institution
`date of any inter partes review for which joinder is requested.” 37 C.F.R.
`§ 42.122(b). Petitioner timely filed its Petition and Motion for Joinder.
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`A motion for joinder should: (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. See Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); PTAB E2E
`Frequently Asked Question H5, available at https://www.uspto.gov/patents/
`ptab/ptab-e2e-frequently-asked-questions.
`Petitioner argues that joinder is appropriate because it “challenge[s]
`the same claims of the ’028 patent [as the Volkswagen IPR] on the same
`
`6
`
`
`
`IPR2022-00204
`Patent 8,688,028 B2
`grounds relying on the same prior art and evidence, including a declaration
`identical in substance from the same [declarant].” Mot. 1–2, 5–6. Petitioner
`contends that joinder will not impact the trial schedule of the Volkswagen
`IPR because Petitioner is not introducing any additional evidence or issues
`and agrees to all applicable deadlines in the Volkswagen IPR. Id. at 5–6.
`Petitioner agrees to assume an “understudy role” in the Volkswagen IPR and
`“only assume the lead role in the proceedings if Volkswagen is no longer a
`party to the proceedings or unable to advance arguments for one or more
`claims, or grounds, for example, because of [35 U.S.C. § 315(e)(1)].” Id. at
`2. Petitioner states that it will make “consolidated filings for all substantive
`papers,” “[a]bsent a Board order precluding Volkswagen from making
`arguments that would otherwise be available to Petitioner, . . . will not
`advance any arguments separate from those advanced by Volkswagen in the
`consolidated filings,” “will not seek additional depositions or deposition
`time,” and “will coordinate deposition questioning and hearing presentations
`with Volkswagen.” Id. at 2, 6. Patent Owner does not oppose the Motion
`for Joinder. Paper 9, 1.
`Upon considering the parties’ arguments and the evidence presented,
`we are persuaded that it is appropriate under these circumstances to join
`Petitioner to the Volkswagen IPR. Petitioner challenges the same claims
`that are challenged in the Volkswagen IPR on the same grounds using the
`same prior art and evidence. Petitioner explicitly agrees that it will take an
`“understudy role” in the Volkswagen IPR, and has shown that the trial
`schedule will not be affected at all by joinder. Thus, joinder to the
`Volkswagen IPR would result in the just, speedy, and inexpensive resolution
`of Petitioner’s challenge. See 37 C.F.R. § 42.1(b).
`
`7
`
`
`
`IPR2022-00204
`Patent 8,688,028 B2
`Accordingly, for the reasons discussed above, we grant Petitioner’s
`Motion for Joinder and join Petitioner as a party to the Volkswagen IPR.
`
`
`III. 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 11, 14–16, and 18 of the ’028 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 ’028 patent shall commence
`on the entry date of this Decision, and notice is hereby given of the
`institution of a trial;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`Case IPR2021-00716 is granted, and Petitioner is hereby joined as
`petitioners in Case IPR2021-00716;
`FURTHER ORDERED that the grounds on which trial in
`Case IPR2021-00716 were instituted are unchanged, and no other grounds
`are added in Case IPR2021-00716;
`FURTHER ORDERED that the Scheduling Order entered in
`Case IPR2021-00716 (Paper 17) and schedule changes agreed by the parties
`in Case IPR2021-00716 (pursuant to the Scheduling Order) shall govern the
`trial schedule in Case IPR2021-00716;
`FURTHER ORDERED that Petitioner’s role in Case IPR2021-00716
`shall be limited as stated by Petitioner in the Motion for Joinder (Paper 5,
`2–3, 6) unless and until Volkswagen is terminated from that proceeding;
`FURTHER ORDERED that the case caption in Case IPR2021-00716
`shall be changed to reflect joinder of Mazda Motor of America, Inc., Subaru
`
`8
`
`
`
`IPR2022-00204
`Patent 8,688,028 B2
`of America, Inc., and Volvo Car USA, LLC as petitioners in accordance
`with the attached example;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of Case IPR2021-00716; and
`FURTHER ORDERED that all further filings shall be made in
`Case IPR2021-00716.
`
`
`
`9
`
`
`
`IPR2022-00204
`Patent 8,688,028 B2
`FOR PETITIONER:
`
`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
`Ashley T. Brzezinski
`WHITE & CASE LLP
`jscheibeler@whitecase.com
`jonathan.lamberson@whitecase.com
`ashley.brzezinski@whitecase.com
`
`
`
`
`10
`
`
`
`
`
`
`
`
`
`
`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,1
`Petitioner,
`v.
`STRATOSAUDIO, INC.,
`Patent Owner.
`
`IPR2021-00716
`Patent 8,688,028 B2
`
`
`
`
`
`
`
`
`
`
`1 Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo Car
`USA, LLC filed a motion for joinder and a petition in Case IPR2022-00204,
`which were granted, and, therefore, have been joined as petitioners in this
`proceeding.
`
`
`
`
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