UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`MAZDA MOTOR OF AMERICA, INC., VOLVO CAR USA, LLC, AND
`SUBARU OF AMERICA, INC.,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`Case No. IPR2022-00204
`U.S. Patent No. 8,688,028
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`EAST\186427259.1
`
`
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`MAZDA MOTOR OF AMERICA, INC., VOLVO CAR USA, LLC, AND
`SUBARU OF AMERICA, INC.,
`Petitioner
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`Case No. IPR2022-00204
`U.S. Patent No. 8,688,028
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`EAST\186427259.1
`
`
`
`I.
`
`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
`
`America, Inc., Volvo Car USA, LLC, and Subaru of America, Inc. (“Petitioner”)
`
`move for joinder with the Inter Partes Review of U.S. Patent No. 8,688,028 (“the
`
`’028 Patent”), Volkswagen Group of America, Inc. v. StratosAudio, Inc., IPR2021-
`
`00716 (“the Volkswagen IPR”), for which the petition for Inter Partes Review was
`
`filed on April 16, 2021, and was instituted for trial on October 25, 2021. IPR2021-
`
`00716, paper 16. This motion is timely because it is filed within one month of the
`
`Board’s decision instituting trial in the Volkswagen IPR, i.e., “no later than one
`
`month after the institution date” of the Volkswagen IPR. 37 C.F.R. § 42.122(b);
`
`Central Security Group – Nationwide, Inc. v. Ubiquitous Connectivity, LP,
`
`IPR2019-01609, Paper 11, at 8-9 (P.T.A.B. Feb. 26, 2020) (stating that § 42.122(b)
`
`is “[t]he only timing requirement for a motion for joinder”). The petitioner in the
`
`Volkswagen IPR (“Volkswagen”) does not oppose Petitioner’s request for joinder.
`
`Petitioner requests institution of this Petition for Inter Partes Review. This
`
`Petition is substantively identical to the original Volkswagen IPR petition in all
`
`material respects. The only substantive changes are in the Introduction to identify
`
`the correct Petitioner, and in mandatory notices under 37 C.F.R. § 42.8(b). The
`
`Petition here and the Volkswagen IPR petition challenge the same claims of the ’028
`
`-1-
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`EAST\186427259.1
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`
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`patent on the same grounds relying on the same prior art and evidence, including a
`
`declaration identical in substance from the same expert.
`
`Thus, the Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
`
`§ 315(c) permits Petitioner’s joinder to the Volkswagen IPR.
`
`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in the
`
`Volkswagen IPR and coordinate all filings with Volkswagen in the Volkswagen IPR.
`
`Volkswagen will maintain the lead role in the proceedings so long as it is a party to
`
`the proceedings and is not estopped under § 315(e)(1), and Petitioner here will
`
`assume an understudy role. Petitioner will 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 §
`
`315(e)(1). Petitioner agrees to consolidated filings for all substantive papers in the
`
`proceeding. Volkswagen and Petitioner will be jointly responsible for the
`
`consolidated filings. Absent a Board order precluding Volkswagen from making
`
`arguments that would otherwise be available to Petitioner, Petitioner will not
`
`advance any arguments separate from those advanced by Volkswagen in the
`
`consolidated filings. These limitations will avoid lengthy and duplicative briefing.
`
`Also, Petitioner will not seek additional depositions or deposition time, and will
`
`coordinate deposition questioning and hearing presentations with Volkswagen.
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`-2-
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`EAST\186427259.1
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`
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`Petitioner agrees to the foregoing conditions even if other IPRs filed by other, third-
`
`party petitioners are joined with the Volkswagen IPR.
`
`Joinder will help efficiently resolve the disputes among the parties. By
`
`joinder, a single Board decision may dispose of the issues raised in the Volkswagen
`
`IPR for all interested parties. Further, the Patent Owner has asserted the ’028 patent
`
`in district court against Petitioner. Joinder will estop Petitioner from asserting in
`
`district court those issues resolved in a final decision from the Volkswagen IPR, thus
`
`narrowing the issues in the district court. See 35 U.S.C. § 315(e)(2). Finally, joinder
`
`would not complicate or delay the Volkswagen IPR and would not adversely affect
`
`any schedule set in that proceeding. In sum, joinder would promote efficient
`
`adjudication in multiple forums. On the other hand, maintaining the Petitioner’s IPR
`
`proceeding separate from that of the Volkswagen IPR would entail needless
`
`duplication of effort.
`
`Joinder will not unduly prejudice any party. Because joinder will not add any
`
`new substantive issues, delay the schedule, burden deponents, or increase needless
`
`filings, any additional costs on the Patent Owner would be minimal. On the other
`
`hand, denial of joinder would prejudice Petitioner. Their interests may not be
`
`adequately protected
`
`in
`
`the Volkswagen IPR proceedings, particularly if
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`-3-
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`EAST\186427259.1
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`
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`Volkswagen settles with the Patent Owner. Petitioner should be allowed to join in
`
`a proceeding affecting a patent asserted against them.
`
`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`StratosAudio, Inc. (the “Patent Owner”) is the owner of the ’028 patent.
`
`StratosAudio, Inc. has asserted the ’028 patent against Petitioner in StratosAudio,
`
`Inc. v. Mazda Motor of America, Inc. No. 6:20-cv-1126 and StratosAudio, Inc. v.
`
`Subaru of America, Inc. No. 6:20-cv-1128, and StratosAudio, Inc. v. Volvo Cars of
`
`North America, LLC et al., No. 6:20-cv-01129, pending in the United States District
`
`Court for the Western District of Texas. On April 16, 2021, Volkswagen filed its
`
`IPR petition, IPR2021-00716, against the ’028 patent. On October 25, 2021, trial
`
`was instituted on all proposed grounds, finding that a reasonable likelihood existed
`
`that Volkswagen’s petition for inter partes review would prevail in showing
`
`unpatentability of at least one claim of the ’028 Patent challenged in the Petition.
`
`See IPR2021-00716, Decision Instituting IPR Review, Paper No. 16. Petitioner
`
`hereby timely moves for joinder with the Volkswagen IPR.
`
`III.
`
`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
`
`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
`
`-4-
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`EAST\186427259.1
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`
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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
`
`15, at 3-4; Motorola Mobility LLC v. Proxyconn, Inc., IPR2013-00109, Paper 15, at
`
`3-4. “The Board will 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.” Dell, IPR2013-00385, Paper 19, at 3. The movant
`
`bears 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.
`
`Dell, IPR2013-00385, Paper 19, at 4.
`
`B.
`
`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
`
`are at issue in the Volkswagen IPR. For simplicity and efficiency, Petitioner has
`
`substantially copied the substance of Volkswagen’s petition and accompanying
`
`declaration. Petitioner does not seek to introduce grounds or claims not in the
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`-5-
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`EAST\186427259.1
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`
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`Volkswagen IPR and seeks only to join the proceeding as instituted. Petitioner
`
`submits an identical expert declaration as in the Volkswagen IPR. The Patent Owner
`
`should not require any discovery beyond that which it may need in the Volkswagen
`
`IPR—nor should the Board permit any. The Petition presents no new substantive
`
`issues relative to the Volkswagen IPR and does not seek to broaden the scope of the
`
`Volkswagen IPR.
`
`For efficiency’s sake, Petitioner will:
`
`1. Adhere to all applicable deadlines in the Volkswagen IPR;
`
`2. Submit “consolidated” filings with the Volkswagen, as set forth above
`
`in the statement of precise relief requested;
`
`3. Refrain from requesting or reserving any additional depositions or
`
`deposition time;
`
`4. Refrain from requesting or reserving additional oral hearing time; and
`
`5. Assume a second-chair role while Volkswagen remains in the
`
`proceeding.1
`
`1 These limitations are consistent with previously granted joinder motions. See, e.g.,
`
`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
`
`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
`
`-6-
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`EAST\186427259.1
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`
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`In view of these provisions, joinder should not affect the trial schedule.
`
`C.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioner presents substantially identical arguments and supporting evidence
`
`as the Volkswagen IPR. Joinder will simplify briefing and discovery. Given that
`
`the Volkswagen IPR and the Petition address the same prior art and grounds for
`
`rejection of the same claims, joining these proceedings allows for joint submissions
`
`and discovery, further streamlining the proceedings. This should promote efficiency
`
`and conserve the Board’s and the parties’ resources. Further, joinder will estop
`
`Petitioner from asserting in district court those issues resolved in a final written
`
`decision in the Volkswagen IPR, thus narrowing the issues in the district court
`
`actions. See 35 U.S.C. § 315(e)(2).
`
`Joinder is Appropriate
`D.
`The Board has previously stated that it is “mindful of a policy preference for
`
`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
`
`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
`
`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
`
`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
`
`-7-
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`EAST\186427259.1
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`
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
`
`anticipates that joinder will be allowed as of right – if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical petition
`
`will be joined to that proceeding, and thus allowed to file its own briefs and make
`
`its own arguments.”)).
`
`Here, because Petitioner seeks institution on the grounds, evidence, and
`
`arguments advanced, or that will be advanced, in the Volkswagen IPR, institution is
`
`warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Volkswagen IPR is
`
`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
`
`asserted. As explained above, joinder would not adversely impact the trial schedule,
`
`briefing, or discovery in the Volkswagen IPR, and the remaining equities compel
`
`joinder.
`
`Petitioner is filing this Petition and joinder motion to ensure that the trial is
`
`completed if Volkswagen reaches settlement with Patent Owner.
`
`1. Without joinder, Petitioner will be prejudiced
`A denial of joinder would prejudice Petitioner. Its substantial interests, as
`
`parties against whom the ’028 patent has been asserted in federal district court
`
`actions, may not be adequately protected by Volkswagen in the Volkswagen IPR
`
`proceedings. For example, Petitioner has an interest that the Volkswagen IPR reach
`
`a final written decision to facilitate a timely and cost-effective end to the controversy
`-8-
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`EAST\186427259.1
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`
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`between Petitioner and the Patent Owner. Petitioner should be allowed to join in a
`
`proceeding affecting a patent asserted against it.
`
`Joinder will not unduly prejudice any party
`2.
`The Petition raises issues already before the Board and long known to the
`
`Patent Owner. Addressing patent validity in this proceeding serves the parties’ and
`
`Board’s interests.
`
`IV. GENERAL PLASTIC IS INAPPLICABLE
`Petitioner respectfully submits application of the General Plastic analysis is
`
`inapplicable here. In General Plastic, the Board set forth a series of factors that may
`
`be analyzed for follow-on petitions to help conserve the finite resources of the Board.
`
`Here, both Petitioner and Volkswagen submitted separate, independent petitions. In
`
`the current motion, Petitioner merely seeks to join Volkswagen’s petition and does
`
`not present any new grounds. As such, Petitioner respectfully submits that General
`
`Plastic does not apply in this circumstance because Petitioner would be taking an
`
`understudy role and the Board’s finite resources would not be impacted. Moreover,
`
`a joinder petition in these circumstances is not the type of serial petition to which
`
`General Plastic applies, as there is no strategic advantage to be gained by filing this
`
`additional petition, and there are no concerns of “road mapping” the Patent Owner’s
`
`strategy because Petitioner has submitted a petition that is substantively identical to
`
`-9-
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`EAST\186427259.1
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`
`
`Volkswagen’s petition. See AT&T Services, Inc. v. Broadband iTV, Inc., IPR2021-
`
`00649, Paper 12 at 7-17 (August 25, 2021) (instituting IPR on a “me-too” petition
`
`despite being filed after the PTAB’s institution decision on the primary petition.
`
`In the event the Board does analyze the General Plastic factors, those factors
`
`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co.,
`
`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16 (PTAB Sept. 6,
`
`2017) (Paper 19) (precedential as to § II.B.4.i).
`
`The first factor is whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent. Petitioner has not previously filed a
`
`petition against the ’028 Patent. Accordingly, this factor weighs in favor of
`
`institution.
`
`The second factor is whether at the time of filing the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition. This
`
`factor is neutral, if not inapplicable, in the General Plastic analysis. Here,
`
`Volkswagen’s petition and Petitioner’s Petition share the same prior art because
`
`Petitioner’s Petition is a “copy” of Volkswagen’s petition. Because Petitioner is
`
`merely seeking to join in an understudy role, the factor is neutral, at best, in
`
`determining whether to institute.
`
`-10-
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`EAST\186427259.1
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`
`
`The third factor is whether at the time of filing of the second petition the
`
`petitioner already received the patent owner’s preliminary response to the first
`
`petition or received the Board’s decision on whether to institute review in the first
`
`petition. The Board entered its decision to institute review on the IPR on October
`
`25, 2021. Further, because the present Petition is essentially a copy of the prior
`
`Volkswagen Petition and submitted with a motion for joinder stating that Petitioner
`
`will serve an understudy role, the Petition is not an attempt to harass the Patent
`
`Owner or otherwise engage in serial, tactical filings. Thus, this factor weighs against
`
`denial of joinder/institution.
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second
`
`petition, and the fifth factor is whether the petitioner provides adequate explanation
`
`for the time elapsed between the filings of multiple petitions directed to the same
`
`claims of the same patent. Petitioner files its Petition and this joinder motion within
`
`the time period allowed under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b). In the
`
`context of a joinder motion where Petitioner will be taking an understudy role, the
`
`fourth and fifth factors are inapplicable.
`
`-11-
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`EAST\186427259.1
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`
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`The sixth factor is the finite resources of the Board. Allowing Petitioner’s
`
`joinder motion where it will serve in an understudy role will not impact the Board’s
`
`resources beyond those resources the Board dedicates to the instant joinder motion.
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on which the Director notices
`
`institution of review. As noted above, joining Petitioner should not impact the
`
`schedule. Accordingly, this factor weighs in favor of institution.
`
`An eighth factor identified by the Board in Shenzhen is the extent to which
`
`the petitioner and any prior petitioner(s) were similarly situated defendants or
`
`otherwise realized a similar-in-time hazard regarding the challenged patent.
`
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898,
`
`Paper 9 at 7, 13-14 (PTAB Oct. 1, 2018) (noting “the purpose of proposed Factor 8
`
`is to discourage tactical filing of petitions over time by parties that faced the same
`
`threat at the same time” such that earlier petitions are filed as “test case(s)” to gain
`
`“tactical advantage”). Because Petitioner’s Petition does not introduce any new
`
`grounds of unpatentability and will effectively merge into a single proceeding with
`
`Volkswagen’s IPR, no such tactical advantage is gained here.
`
`Thus, none of the General Plastic factors weighs against institution and
`
`joinder in this situation.
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`EAST\186427259.1
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`-12-
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`
`
`V.
`
`CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the
`
`Volkswagen IPR. Petitioner files this motion under the statutory joinder provisions
`
`as contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
`
`justice, and speed.
`
`For the foregoing reasons, Petitioner respectfully requests inter partes review
`
`of U.S. Patent No. 8,688,028 and joinder with Volkswagen v. StratosAudio, Inc.,
`
`IPR2021-00716.
`
`Dated: November 22, 2021
`
`Respectfully submitted,
`
`
`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
`
`-13-
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`EAST\186427259.1
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned hereby
`
`certifies that a copy of the foregoing Motion for Joinder was served on November
`
`22, 2021, by agreement, via electronic service upon the following counsel for Patent
`
`Owner:
`
`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)
`
`In addition, a copy of this Motion for Joinder and supporting material is being
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`electronically served in its entirety on counsel for Petitioner in related Case No.
`
`IPR2021-00716.
`
`Eric S. Lucas (eric.lucas@shearman.com)
`David J. Cooperberg (eric.lucas@shearman.com)
`VW-Stratos@Shearman.com
`
`EAST\186427259.1
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`
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`Dated: November 22, 2021
`
`Respectfully submitted,
`
`
`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
`
`EAST\186427259.1
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`
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