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