UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SONY ELECTRONICS INC.,
`
`Petitioner,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`
`Patent Owner.
`
`
`Patent No. 11,122,357
`Filing Date: August 5, 2013
`Issue Date: September 14, 2021
`
`Inventor: Gregory C. Burnett
`Title: FORMING VIRTUAL MICROPHONE ARRAYS USING
`DUAL OMNIDIRECTIONAL MICROPHONE ARRAY (DOMA)
`
`
`__________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER TO AND CONSOLIDATION WITH
`RELATED INTER PARTES REVIEW IPR2023-00251
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R § 42.122(b)
`
`Case No. IPR2023-01153
`__________________________________________________________________
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SONY ELECTRONICS INC.,
`
`Petitioner,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`
`Patent Owner.
`
`
`Patent No. 11,122,357
`Filing Date: August 5, 2013
`Issue Date: September 14, 2021
`
`Inventor: Gregory C. Burnett
`Title: FORMING VIRTUAL MICROPHONE ARRAYS USING
`DUAL OMNIDIRECTIONAL MICROPHONE ARRAY (DOMA)
`
`
`__________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER TO AND CONSOLIDATION WITH
`RELATED INTER PARTES REVIEW IPR2023-00251
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R § 42.122(b)
`
`Case No. IPR2023-01153
`__________________________________________________________________
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`Page(s)
`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 1
`A.
`Legal Standard ....................................................................................... 1
`B.
`Jawbone and Amazon Have Settled Their Dispute and the
`Amazon IPR Will Not Exist at the Time of Institution ......................... 3
`Granting Joinder Will Disrupt the Amazon IPR Schedule ................... 4
`Patent Owner Will Address Whether Petitioner’s Petition
`Warrants Institution in its Preliminary Response ................................. 5
`The Gen. Plastic Factors Weigh Against Joinder ................................. 6
`E.
`III. CONCLUSION ................................................................................................ 7
`
`
`
`C.
`D.
`
`i
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. RFCyber Corp.,
`IPR2022-00412, Paper 11 (P.T.A.B. Jul. 21, 2022) ............................................. 3
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854, Paper 9, 5 (P.T.A.B. Oct. 28, 2020) (precedential) .............. 6, 7
`Dell Inc. v. Network-1 Sec. Sols., Inc.,
`IPR2013-00385, Paper 17, 6 (P.T.A.B. July 29, 2013) ........................................ 2
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) ........................................................................ 1, 5
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017)..................................... 1, 6, 7
`Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (P.T.A.B. April 24, 2013) .......................................... 5
`Samsung Elecs. Am., Inc. v. RFCyber Corp.,
`IPR2021-00980, Paper 18 (P.T.A.B. Apr. 11, 2022) ........................................... 3
`Samsung Elecs. Co. v. Immersion Corp.,
`IPR2018-01467, Paper 19 (P.T.A.B. June 18, 2019) ........................................... 4
`Sony Corp. of Am. v. Network-1 Sec. Sols., Inc.,
`IPR2013-00386, Paper 16, 3 (P.T.A.B. Jul. 29, 2013) ......................................... 1
`ZTE (USA) LLC v. Seven Networks, LLC,
`IPR2019-00460, Paper 18, 5 (P.T.A.B. Jun. 6, 2019) ...................................... 4, 5
`Statutes
`35 U.S.C. § 317 .......................................................................................................... 3
`35 U.S.C. § 317(a) ................................................................................................. 2, 3
`
`ii
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`Other Authorities
`37 C.F.R. § 42.20(c) ................................................................................................... 2
`37 C.F.R. § 42.122(b) ................................................................................................ 2
`
`
`iii
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`EXHIBIT LIST
`
`Exhibit No.
`2001
`
`Description of Document
`Joint Motion to Terminate Proceedings, Amazon.com, Inc.
`v. Jawbone Innovations, LLC v. Amazon.com Inc., Case
`No. IPR2023-00251 (P.T.A.B. July 29, 2023)
`
`
`
`
`
`
`iv
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`I.
`
`INTRODUCTION
`On June 30, 2023, Petitioner Sony Electronics Inc. (“Petitioner”) filed a
`
`Petition for Inter Partes Review (Paper 1, “Petition”) against U.S. Patent No.
`
`11,122,357 (Ex. 1001). At the same time, Petitioner filed a “Motion For Joinder To
`
`And Consolidation With Related Inter Partes Review IPR2023-00251 Pursuant To
`
`35 U.S.C. § 315(c) And 37 C.F.R § 42.122(c)” seeking to join IPR2023-00251 (the
`
`“Amazon IPR”). Paper No. 3 (“Motion”).
`
`The Board should deny Petitioner’s Motion because the Amazon IPR will
`
`soon be terminated, and therefore joinder will needlessly disrupt its schedule.
`
`Moreover, the Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
`
`Paper 19 (P.T.A.B. Sept. 6, 2017) factors weigh in favor of denial of the Petition.
`
`II. ARGUMENT
`A. Legal Standard
`“To join a party to an instituted 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). The first decision is “whether the joinder [to]
`
`applicant’s petition for IPR ‘warrants’ institution under § 314.” The second is
`
`“whether to ‘join as a party’ the joinder applicant.” Id. “Joinder may be authorized
`
`when warranted, but the decision to grant joinder is discretionary.” Sony Corp. of
`
`Am. v. Network-1 Sec. Sols., Inc., IPR2013-00386, Paper 16, 3 (P.T.A.B. Jul. 29,
`
`1
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`2013). “The fact that the [Director or his delegate the] Board has the discretion to
`
`join a party does not mean that joinder is automatic, particularly given the need to
`
`complete proceedings in a just, speedy, and inexpensive manner.” Dell Inc. v.
`
`Network-1 Sec. Sols., Inc., IPR2013-00385, Paper 17, 6 (P.T.A.B. July 29, 2013).
`
`As the moving party, Petitioner has the burden of proof to establish that
`
`joinder is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). When considering a motion
`
`for joinder, the Board examines factors including: (1) reasons why joinder is
`
`appropriate; (2) any new grounds of unpatentability asserted in the petition; (3) what
`
`impact (if any) joinder would have on the trial schedule for the existing review; and
`
`(4) specifically how briefing and discovery may be simplified. See Dell Inc.,
`
`IPR2013-00385, Paper 17 at 3.
`
`Under 35 U.S.C. § 317(a) “[a]n inter partes review instituted under this
`
`chapter shall be terminated with respect to any petitioner upon the joint request of
`
`the petitioner and the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” Further, “[i]f no petitioner
`
`remains in the inter partes review, the Office may terminate the review or proceed
`
`to a final written decision under section 318(a).” Id.
`
`The Board has recognized that “[t]here are strong public policy reasons to
`
`favor settlement between the parties to a proceeding.” PTAB Trial Practice Guide
`
`(“TPG”) at 86 (Nov. 2019 Rev.). Indeed, “The Board expects that a proceeding will
`
`2
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`terminate after the filing of a settlement agreement, unless the Board has already
`
`decided the merits of the proceeding.” Id. (citing 35 U.S.C. § 317(a)).
`
`B.
`
`Jawbone and Amazon Have Settled Their Dispute and the
`Amazon IPR Will Not Exist at the Time of Institution
`Jawbone and Amazon have settled their dispute and have filed a motion to
`
`terminate the Amazon IPR. Ex. 2001. The Board’s practice is to grant such motions.
`
`35 U.S.C. § 317 (“An inter partes review instituted under this chapter shall be
`
`terminated with respect to any petitioner upon the joint request of the petitioner and
`
`the patent owner, unless the Office has decided the merits of the proceeding before
`
`the request for termination is filed.”); Consolidated Trial Practice Guide (Nov. 2019)
`
`at 86 (“The Board expects that a proceeding will terminate after the filing of a
`
`settlement agreement, unless the Board has already decided the merits of the
`
`proceeding.”). The Board often terminates proceedings, even if a motion for joinder
`
`is pending. E.g., Samsung Elecs. Am., Inc. v. RFCyber Corp., IPR2021-00980, Paper
`
`18, at 2-3 (P.T.A.B. Apr. 11, 2022) (terminating IPR despite pending motion for
`
`joinder); Apple Inc. v. RFCyber Corp., IPR2022-00412, Paper 11 at 2 n.1 (P.T.A.B.
`
`Jul. 21, 2022) (dismissing motion for joinder as moot because the IPR seeking to be
`
`joined had settled).
`
`Accordingly, since the Amazon IPR will be terminated prior to ruling on this
`
`Petition, the Board should deny the Motion. ZTE (USA) LLC v. Seven Networks,
`
`3
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`LLC, IPR2019-00460, Paper 18, 5 (P.T.A.B. Jun. 6, 2019) (“Given that the Samsung
`
`IPR is no longer pending, it cannot serve as a proceeding to which this proceeding
`
`may be joined.”).
`
`C. Granting Joinder Will Disrupt the Amazon IPR Schedule
`The Amazon IPR will suffer an unduly long delay if the Board were to
`
`terminate Amazon but nevertheless maintain the Amazon IPR. Patent Owner
`
`discovery has just begun and has stalled in view of the settlement and pending
`
`termination. Joining a new party to those proceedings would undoubtedly require a
`
`new scheduling order and thus would disrupt the Amazon IPR schedule.
`
`Indeed, in situations where the original parties request termination of a
`
`proceeding after new petitioners file motions for joinder, the Board often terminates
`
`only the petitioner and vacates the scheduling order in the original proceeding
`
`because “no petitioner remains.” See, e.g., Samsung Elecs. Co. v. Immersion Corp.,
`
`IPR2018-01467, Paper 19 (P.T.A.B. June 18, 2019). This effectively stays the
`
`original proceeding, giving the Board time to decide whether to institute and join a
`
`subsequent, identical petition. Id. Doing so here would obviously disrupt the
`
`schedule in the Amazon IPR which weighs against joinder. Kyocera Corp. v.
`
`Softview LLC, IPR2013-00004, Paper 15 at 4 (P.T.A.B. April 24, 2013).
`
`Jawbone’s Preliminary Response in this proceeding is due on October 18,
`
`2023. “Generally, we decide whether joinder is appropriate ‘after receiving a
`
`4
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`preliminary response under section 313,’ when we determine whether institution of
`
`an inter partes review is warranted.” ZTE, IPR2019-00460, Paper 18, 7. The Board
`
`often takes up to three months to issue an institution decision; thus an institution
`
`decision may not issue until January 2024. The resulting delay in the Amazon IPR
`
`would prevent the Board from concluding the proceeding within one year of
`
`institution.
`
`If joinder is granted now, a new scheduling order will be required, delaying
`
`Patent Owner’s vindication of its rights far beyond the statutory deadlines.
`
`Accordingly, the key factor of whether joinder will impact the trial schedule weighs
`
`heavily against granting Petitioner’s Motion. Id., Paper 18, 7-8.
`
`D.
`
`Patent Owner Will Address Whether Petitioner’s Petition
`Warrants Institution in its Preliminary Response
`Patent Owner is preparing its Patent Owner Preliminary Response which will
`
`address whether Petitioner’s Petition warrants institution. A Petition that does not
`
`warrant institution cannot join another proceeding. Facebook, 973 F.3d at 1332
`
`(“The statute makes clear that the joinder decision is made after a determination that
`
`a petition warrants institution, thereby affecting the manner in which an IPR will
`
`proceed.”) (citation omitted).
`
`5
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`The Gen. Plastic Factors Weigh Against Joinder
`E.
`The Board has clarified that discretionary factors must be considered before
`
`determining a joinder motion. Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854,
`
`Paper 9, 5 (P.T.A.B. Oct. 28, 2020) (precedential) (“Uniloc”) (“before determining
`
`whether to join . . . even though the Petition is a ‘me-too petition,’ we first determine
`
`whether application of the General Plastic factors warrants the exercise of discretion
`
`to deny the Petition under §314(a).”) See also Gen. Plastic, IPR2016-01357, Paper
`
`19 at 15-19 (precedential). The Gen. Plastic factors weigh in favor of exercising
`
`discretion to deny the petition and joinder.
`
`As to Factor 2, Petitioner refuses to indicate when it first learned of the
`
`references in the Petition. Motion at 9. Given Petitioner’s failure to provide this
`
`information, it should be presumed that Petitioner was aware of the references long
`
`before filing this Petition. In any case, it was Petitioner’s responsibility to explain
`
`when it learned of the references. This factor, accordingly, weighs in favor of denial.
`
`Uniloc, IPR2020-00854, Paper 9, at 9 (“Because of the lack of explanation, we
`
`conclude that this second General Plastic factor weighs in favor of denying
`
`institution of the proceeding.”).
`
`As to Factor 3, “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
`
`6
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`petition;” (id. at 7). Petitioner cannot deny that it had Patent Owner’s Preliminary
`
`Response in the Amazon IPR at the time it filed the instant Petition. This factor,
`
`accordingly, weighs in favor of denial.
`
`With respect to Factor 4, as discussed above, Petitioner does not state when it
`
`first learned of the references in the Petition. Motion at 8-9. Petitioner makes no
`
`substantive argument as to this factor and, accordingly, this factor weighs in favor
`
`of denial.
`
`As to Factor 5, “whether the petitioner provides an adequate explanation for
`
`the time elapsed between the filings of multiple petitions directed to the same claims
`
`of the same patent,” Petitioner makes no explanation for the elapsed time. Uniloc,
`
`IPR2020-00854, Paper 9, at 7.
`
`Finally, Factors 6 and 7 weigh in favor of denial for the reasons stated above
`
`as to the increased complexity from joinder.
`
`III. CONCLUSION
`Allowing joinder will needlessly disrupt and delay the proceedings in the
`
`Amazon IPR. Moreover, the Gen. Plastic factors favor denial of Petitioner’s Petition
`
`and Motion. Accordingly, the Board should deny the Petitioner’s Motion.
`
`
`
`
`
`
`
`
`Dated: July 31, 2023
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By:
`
`/
`/Peter Lambrianakos
`
`
`Peter Lambrianakos (Reg. No. 58,279)
`
`7
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`Email: plambrianakos@fabricantllp.com
`
`
`
`8
`
`
`
`IPR2023-01153
`PATENT NO. 11,122,357
`
`CERTIFICATE OF SERVICE
`A copy of the foregoing Opposition to Petitioner’s Motion for Joinder and to
`
`Consolidation with Related Inter Partes Review IPR2023-00251 Pursuant to 35
`
`U.S.C. § 315(c) and 37 C.F.R § 42.122(b) and Exhibit 2001 have been served on
`
`Petitioner’s counsel of record as follows:
`
`Gregory S. Gewirtz
`Email: ggewirtz@lernerdavid.com
`Email: litigation@lernerdavid.com
`Russell W. Faegenburg
`Email: rfaegenburg@lernerdavid.com
`LERNER DAVID LLP
`20 Commerce Drive
`Cranford, New Jersey 07016
`
`Attorneys for Sony Electronics Inc.
`
`July 31, 2023
`
`
`
`
`
`By:
`
`/
`/Peter Lambrianakos
`
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`
`
`
`
`
`
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