`
`IPR2023-01153
`U.S. Patent No. 11,122,357
`Motion for Joinder
`Attorney Docket No. SONYNJ 7.1R-019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`SONY ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`____________________________
`
`IPR2023-01153
`U.S. Patent No. 11,122,357
`__________________________________________________________________
`
`
`
`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)
`
`
`7721197_1.docx
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`
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`
`
`TABLE OF CONTENTS
`
`
`Page
`INTRODUCTION ........................................................................................... 1
`I.
`STATEMENT OF FACTS .............................................................................. 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`A. Legal Standard .......................................................................................... 3
`B. Petitioner’s Motion for Joinder is Timely ................................................ 3
`C. The Board Should Permit Joinder ............................................................. 3
`1. Joinder is Appropriate ........................................................................ 4
`2. Petitioner Proposes No New Grounds of Unpatentability ................. 5
`3. Joinder Will Not Unduly Burden or Negatively Impact The Amazon
`IPR Trial Schedule ............................................................................. 5
`4. How Briefing and Discovery May Be Simplified ............................. 6
`D. General Plastic Is Inapplicable ................................................................ 8
`IV. CONCLUSION .............................................................................................. 10
`
`
`
`
`7721197_1.docx
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`
`
`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`I.
`
`INTRODUCTION
`Sony Electronics Inc. (“Petitioner” or “Sony”) respectfully submits this
`
`Motion for Joinder, together with a Petition for Inter Partes Review (“IPR”) of
`
`U.S. Patent No. 11,122,357 (“the ’357 Patent”) filed contemporaneously herewith.
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner requests
`
`institution of this IPR, and joinder and consolidation with IPR2023-00251 (“the
`
`Amazon IPR”). That IPR challenges the same claims and was instituted on June 1,
`
`2023.
`
`Joinder here would be consistent with the overarching policy of securing
`
`“the just, speedy, and inexpensive resolution” of every IPR proceeding. 37 C.F.R.
`
`§ 42.1(b). Petitioner’s Petition and the Amazon petition are substantively
`
`identical—they contain the same grounds, based on the same prior art
`
`combinations against the same claims. Thus, joinder would not unduly complicate
`
`the Amazon IPR, nor delay the schedule of that proceeding.
`
`To streamline discovery and briefing, Petitioner agrees to take an understudy
`
`role, as Amazon did in its now-granted motion for joinder. Petitioner will not
`
`actively participate substantively in the Amazon IPR unless Amazon terminates its
`
`involvement and thus is unavailable to take the lead in that proceeding.
`
`Because
`
`joinder would promote
`
`judicial efficiency
`
`in determining
`
`patentability without prejudicing Patent Owner, the Board should grant this Motion.
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`7721197_1.docx
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`II.
`
`STATEMENT OF FACTS
`Patent Owner filed suit against Samsung on May 27, 2021, asserting seven
`
`patents. (Case No. 2:21-cv-00186, E.D. Tex.) Patent Owner filed suits against
`
`Apple and Google on September 23, 2021, and asserted nine patents against each
`
`of them, including the seven patents also asserted against Samsung. (Case
`
`Nos. 6:21-cv-00985 and 6:21-cv-00984, W.D. Tex.) Patent Owner filed suit
`
`against Amazon on Nov. 29, 2021, and asserted the same nine patents. (Case
`
`No. 2:21-cv-00435, E.D. Tex., transferred to Case No. 5:22-cv-06727, N.D. Cal.).
`
`On February 28, 2023, Patent Owner filed suit against Petitioner, asserting
`
`eight of the nine patents included in the suit against Amazon, including the ’357
`
`Patent. (Case No. 2:23-cv-01161-CCC-LDW, D.N.J., ECF No. 1.) Petitioner was
`
`served with the complaint on March 16, 2023. (Id., ECF No. 5, at 2.)
`
`Samsung, Apple, Google and Amazon have filed IPR Petitions against each
`
`of the patents asserted against them. Amazon filed a petition for IPR challenging
`
`the ’357 Patent on November 21, 2022. The Board instituted Amazon’s IPR on
`
`June 1, 2023. IPR2023-00251, Paper 7, at 2 (PTAB June 1, 2023). Petitioner is
`
`filing a substantively identical petition to that previously filed by Amazon, and is
`
`seeking joinder to Amazon’s now-instituted IPR.
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`7721197_1.docx
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`2
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`The Board has the authority to join Petitioner as a party to the Amazon IPR.
`
`35 U.S.C. § 315(c); see also 35 U.S.C. § 315(d) (Board also has the authority to
`
`consolidate proceedings). Whether a request for joinder should be granted is
`
`discretionary. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, at 4
`
`(PTAB, Apr. 24, 2013).
`
`B.
`Petitioner’s Motion for Joinder is Timely
`A petitioner may request joinder “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). This is the “only timing requirement for a motion for joinder.” Cent.
`
`Sec. Grp.-Nationwide, Inc. v. Ubiquitous Connectivity, LP, IPR2019-01609,
`
`Paper 11, at 8-9 (PTAB Feb. 26, 2020).
`
`This Motion for Joinder is timely. Amazon’s IPR was instituted June 1,
`
`2023, and Petitioner brings this motion within one month of that institution. Thus,
`
`although Sony is not otherwise time-barred pursuant to 37 C.F.R. § 42.101(b),
`
`Petitioner is filing its motion for joinder within the time limit set forth in 37 C.F.R.
`
`§ 42.122(b).
`
`C. The Board Should Permit Joinder
`In deciding whether to exercise its discretion and permit joinder, the Board
`
`considers: (1) why joinder is appropriate; (2) whether the new petition presents any
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`7721197_1.docx
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`3
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
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`new grounds of unpatentability; (3) any impact joinder would have on the trial
`
`schedule for the existing review; and (4) how briefing and discovery may be
`
`simplified. Kyocera, IPR 2013-00004, Paper 15, at 4 (Apr. 24, 2013). Here, each of
`
`the four factors weighs in favor of joinder.
`
`1.
`Joinder is Appropriate
`Joinder is appropriate here because the concurrently filed Petition involves the
`
`same patent, challenges the same claims, relies on the same exhibits, and is based on
`
`the same grounds and combinations of prior art submitted in the Amazon IPR. The
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`concurrently filed Petition is substantively identical to the Amazon petition,
`
`containing only minor differences relating to (a) the procedural formalities of having
`
`a different Petitioner file the Petition, and (b) changes to arguments regarding
`
`discretionary denial under § 314(a) that result from a different co-pending litigation.
`
`There are no changes to the facts, citations, evidence, or arguments presented in the
`
`grounds for unpatentability set forth in the Amazon petition. Because the
`
`proceedings are substantively identical, good cause exists for joining Petitioner as a
`
`party to the Amazon IPR and consolidating with the proceedings in that IPR, so that
`
`the Board can efficiently resolve identical challenges in a single proceeding. Cent.
`
`Sec. Grp., IPR2019-01609, Paper 11, at 8; ZyXEL, IPR2021-00739, Paper 17, at 20.
`
`This efficiency gain extends to the litigation. In the Petition, Petitioner
`
`stipulates that, if Petitioner’s Petition is instituted, then Petitioner will not pursue the
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`7721197_1.docx
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`4
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
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`grounds identified in its Petition in the district court. Thus, joinder will ensure that
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`the grounds presented in the Amazon IPR are not inefficiently and unnecessarily
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`adjudicated in another forum (e.g., the district court litigation involving Petitioner).
`
`Because joinder will increase efficiency and reduce duplicative proceedings
`
`involving the same patentability challenges, this factor favors joinder.
`
`2.
`Petitioner Proposes No New Grounds Of Unpatentability
`The concurrently filed Petition presents the same grounds of unpatentability
`
`as the Amazon petition and challenges the same claims. Therefore, Petitioners do
`
`not propose any new grounds of unpatentability and this factor also favors joinder.
`
`3.
`
`Joinder Will Not Unduly Burden Or Negatively
`Impact The Amazon IPR Trial Schedule
`Because Petitioner’s Petition is substantively identical to the Amazon
`
`Petition—presenting the same grounds and challenging the same claims using the
`
`same evidence—there are no new issues for Patent Owner to address. Further,
`
`joinder with the Amazon IPR will not unduly burden or negatively impact the
`
`schedule in that proceeding in any way. Thus, this factor also favors joinder. Sony
`
`Corp. v. Memory Integrity, LLC, IPR2015-01353 Paper 11, at 6 (granting motion
`
`where joinder does “not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required [by the original IPR]”).
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
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`4. How Briefing and Discovery May Be Simplified
`The concurrently filed Petition and
`the Amazon petition present
`
`substantively
`
`identical grounds of unpatentability,
`
`including
`
`the same
`
`combinations of art against the same claims. Additionally, if this motion for joinder
`
`is granted, Petitioners agree to take an “understudy” role, adhering to the same
`
`restrictions that the Board imposed on Amazon as a condition to joinder in another
`
`IPR involving another patent of the Patent Owner directed to related subject matter.
`
`(See IPR2023-00284 Paper No. 12, at 11-12.) Thus, Petitioners agree that:
`
`(1) [Amazon] alone is responsible for all petitioner filings in the joined
`proceeding until such time that it is no longer an entity in the joined proceeding,
`and (2) [Sony] is bound by all filings by [Amazon] in the joined proceeding,
`except for (a) filings regarding termination or settlement and (b) filings where
`[Sony] receives permission to file an independent paper. [Sony] must obtain
`prior Board authorization to file any paper or to take any action on its own in
`the joined proceeding, so long as [Amazon] remains as a non-terminated
`petitioner in the joined proceeding.
`(Id. at 11.)
`
`Sony also agrees that if it is joined as a party to the Amazon IPR, it will be
`
`bound by any agreements between the Patent Owner and Amazon regarding
`
`discovery and/or depositions in the IPR, and Sony will not seek additional
`
`depositions or deposition time. See Mylan Pharms. Inc. v. Novartis AG,
`
`IPR2015-00268, Paper 17, at 5 (PTAB April 10, 2015) (emphasis in original); Sony,
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`6
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
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`IPR2015-01353, Paper 11, at 6 (granting joinder where petitioners requested an
`
`“understudy” role). Sony will assume the primary role only if Amazon terminates
`
`its involvement in the proceeding.
`
`By joining Petitioner in the Amazon IPR and allowing Petitioner to take on
`
`an understudy role, both briefing and discovery will be simplified because Patent
`
`Owner can maintain its current trial schedule and avoid duplicative efforts. The
`
`understudy role will minimize any potential complications or delay that potentially
`
`could result by joinder, including duplicative discovery and filings. Sony,
`
`IPR2015-01353, Paper 11, at 6-7 (“joinder would increase efficiency by eliminating
`
`duplicative filings and discovery, and would reduce costs and burdens on the parties
`
`as well as the Board” where petitioners sought an “understudy” role). Thus, this
`
`factor also favors joinder.
`
`For the foregoing reasons, each of the factors that the Board considers in
`
`evaluating potential joinder weighs in favor of granting this Motion.
`
`D. General Plastic Is Inapplicable
`The General Plastic analysis is inapplicable to this joinder motion and
`
`concurrently filed Petition. In General Plastic, the Board set forth factors for
`
`analyzing follow-on petitions with a view toward conserving the Board’s resources.
`
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
`
`(PTAB Sept. 6, 2017).
`
`7721197_1.docx
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`7
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`
`Here, Petitioner is not filing a follow-on petition that raises any new issue.
`
`Rather, Petitioner seeks to join the Amazon IPR as an understudy and does not
`
`present any new grounds. The Board has found that the General Plastic factors are
`
`“not particularly relevant” in this situation, i.e., where a different petitioner files a
`
`“me-too” petition with a
`
`timely motion for
`
`joinder. Cent. Sec. Grp.,
`
`IPR2019-01609, Paper 11, at 8; Celltrion, Inc. v. Genentech, Inc., IPR2018-01019,
`
`Paper 11, at 9-11 (PTAB Oct. 30, 2018).
`
`Unlike in Apple v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB
`
`Oct. 28, 2020) (precedential) (“Uniloc”), where joinder was denied, this is Sony’s
`
`first IPR petition challenging the ’357 Patent, and Sony’s “me-too” petition is not
`
`otherwise time-barred, because it has until March 2024 to file an IPR petition.
`
`Accordingly, the factors that influenced the Board’s application of the General
`
`Plastic factors in Uniloc—where the petitioner had already filed a previous
`
`petition, was time-barred from filing a second petition and sought to bring a second
`
`petition through joinder after denial of the first petition (id. at 4, 7)—are not
`
`present. In summary, the General Plastic factors do not apply in the present
`
`circumstances.
`
`Even if the Board were to consider the General Plastic factors, they would
`
`weigh in favor of institution. With respect to factor 1, Petitioner has not previously
`
`filed a petition against the ’357 Patent. Petitioner and the prior petitioners are not the
`
`7721197_1.docx
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
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`same party and have no significant relationship. They are competitors accused of
`
`infringement—in different actions pending in different courts—based on sales of
`
`different products. This weighs against denial. NetNut Ltd. v. Bright Data Ltd.,
`
`IPR2021-00465, Paper 11, at 9 (PTAB Aug. 12, 2021) (declining to extend General
`
`Plastic and Valve to different petitioner with no relationship to previous petitioners);
`
`Mercedes-Benz USA, LLC v. Carucel Invs. L.P., IPR2019-01404, Paper 12, at 11-12
`
`(PTAB Jan. 22, 2020); Toshiba Am. Info. Sys., Inc. v. Walletex Microelecs. Ltd.,
`
`IPR2018-01538, Paper 11, at 20 (PTAB Mar. 5, 2019).
`
`The second through fifth factors relate to timing issues that are largely
`
`irrelevant here. These factors are designed “to assess and weigh whether a
`
`petitioner should have or could have raised the new challenges earlier.” Google
`
`LLC v. Express Mobile, Inc., IPR2022-00597, Paper 17, at 8-9 (PTAB Aug. 19,
`
`2022). But Petitioner does not bring any new challenges. Thus, when Petitioner
`
`learned of the prior art, whether Petitioner received Patent Owner’s preliminary
`
`response or an institution decision, and the length of time between the filing of the
`
`petitions, are all irrelevant. Petitioner has substantively duplicated the Amazon
`
`IPR, alleging the same facts, grounds, and prior art, and has agreed to take an
`
`understudy role. Thus, factors two through five weigh against the Board’s exercise
`
`of discretion to deny institution.
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`7721197_1.docx
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`
`The sixth factor considers the Board’s resources and the seventh factor
`
`relates to the Board’s ability to meet the one-year statutory deadline. Allowing
`
`joinder here would not impact the Board’s resources (beyond those dedicated to
`
`deciding this Motion), and would not impact the Board’s ability to meet the
`
`one-year statutory deadline.
`
`For the foregoing reasons, the General Plastic factors do not weigh against
`
`institution and joinder of Petitioner to the Amazon IPR.
`
`IV. CONCLUSION
`Petitioner respectfully requests
`
`that
`
`the Board
`
`institute Petitioner’s
`
`concurrently filed IPR Petition, and then join Petitioner as a party to the Amazon
`
`IPR.
`
`Respectfully submitted,
`LERNER DAVID LLP
`
`Dated: June 30, 2023
`
`
`
`
`
`
`
`
`
`By:
`
`/Gregory S. Gewirtz/
`Gregory S. Gewirtz
`(Reg. No. 36,522)
`
`
`
`
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`7721197_1.docx
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`10
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`Sony Electronics Inc. v Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
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`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing 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) was served in its entirety by filing these documents through the
`
`PTAB E2E System, as well as by Priority Overnight
`
`to
`
`the following
`
`correspondence address of record for Patent Owner on June 30, 2023, as follows.
`
`Mark Leonardo
`Nutter McClennen & Fish LLP
`Seaport West
`155 Seaport Blvd.
`Boston, MA 02210-2604
`
`Peter Lambrianakos
`FABRICANT LLP
`411 Theodore Fremd Avenue
`Suite 206 South
`Rye, NY 10580
`
`June 30, 2023
`
`
`
`By:
`
`/Gregory S. Gewirtz/
`Gregory S. Gewirtz
`(Reg. No. 36,522)
`
`
`
`
`
`
`
`
`
`
`Dated:
`
`7721197_1.docx
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`11
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