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,
`Pelilivuer,
`
`Vv.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`
`IPR2022-00205
`Patent 8,903,307 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 US.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 CFR. § 42.122
`
`I.
`
`INTRODUCTION
`
`A, Buckground 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,
`Pelilivuer,
`
`Vv.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`
`IPR2022-00205
`Patent 8,903,307 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 US.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 CFR. § 42.122
`
`I.
`
`INTRODUCTION
`
`A, Buckground and Summary
`.
`Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo
`
`Car USA, LLC (collectively, “Petitioner’”) filed a Petition (Paper 1, “Pet.’’)
`
`
`
`IPR2022-00205
`Patent 8,903,307 B2
`
`requesting inter partes review of claims 11 and 15-18 of US. Patent
`
`No. 8,903,307 B2 (Ex. 1001, “the ’307 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 ofAmerica, Inc. v. StratosAudio, Inc.,
`
`Case IPR2021-00712 (“the Volkswagen JPR”), which also involves claims
`
`11 and 15-18 of the ’307 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 “showsthat 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 groundsinstituted in the Volkswagen
`
`IPR andgrant Petitioner’s Motion for Joinder.
`
`B. Related Matters
`
`Theparties indicate that the ’307 patent is the subject of the following
`
`district court cases: StratosAudio, Inc. v. Volkswagen Group ofAmerica,
`
`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 ofAmerica, Inc., Case No. 6:20-cv-1126 (W.D. Tex.),
`
`StratosAudio, Inc. v. Subaru ofAmerica, Inc., Case No. 6:20-cv-1128
`
`(W.D. Tex.), and StratosAudio, Inc. v. Volvo Cars ofNorth America, LLC,
`
`Case No. 6:20-cv-1129 (W.D. Tex.) (collectively, “the district court cases’’).
`
`See Pet. 2; Paper6, 1.
`
`
`
`IPR2022-00205
`Patent 8,903,307 B2
`
`Petitioner filed a petition challenging claims of a patent related to the
`
`°307 patent and motion for joinder in Case IPR2022-00204. Other
`
`proceedings involving patents asserted in the district court cases are the
`
`Volkswagen IPR (instituted) and Cases IPR2021-00716 (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 ofthe 307 patent is independent. Claims 15-18
`
`each dependdirectly from claim 11. Claim 11 recites:
`
`11. A system for correlating media content identifying
`data with at
`least one broadcast segment
`received by a
`communication device, the system comprising:
`
`a receiver configured to receive a broadcast stream
`comprising the at least one broadcast segment and associated
`media content, the receiver further configured to receive 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 comprisesat least one
`clement;
`
`at least one computer processor configured to extract the
`media content identifying data from the data stream, associating
`each media content identitying data element with at least one of
`a plurality of media content;
`an electronic memory of the communication device
`configured to store, 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
`
`
`
`IPR2022-00205
`Patent 8,903,307 B2
`
`the at least one broadcast segmentis corollary to the at least one
`of the plurality of media content; and
`an output configured to present at least a portion of the
`‘data elements
`stored in the
`electronic memory of
`the
`communication device to provide 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 priorart:
`
`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,
`(Ex. 1004, “Takahisa’”’).
`
`issued Nov. 26,
`
`1996
`
`E. Prior Art and Asserted Grounds
`
`Petitioner asserts that claims 11 and 15-18of the ’307 patent are
`
`unpatentable on the following grounds:
`
`
`
`
`
`
`
`
`
`
`
`
`' 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 ’307 patent have an effective filing date before the
`effective date of the applicable AIA amendments, werefer to the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103. See Pet. 4.
`
`
`
`IPR2022-00205
`Patent 8,903,307 B2
`
`Il. ANALYSIS
`
`Joinder for purposes of an inter partes review is governed by
`
`35 U.S.C. § 315(c), whichstates:
`
`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 undersection 313 or the expiration of the time for filing
`such a response, determines warrants the institution ofan inter
`parties review undersection 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 whetherthe joinder applicant’s
`
`petition for IPR ‘warrants’ institution under § 314.” Jd. “Second,to effect
`
`joinder, § 315(c) requires the Director to exercise his discretion to decide
`
`whetherto ‘join as a party’ the joinder applicant.” Jd.
`
`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.
`
`Wepreviously instituted an inter partes review in the Volkswagen IPR. See
`
`IPR2021-00712, Paper 16 (““Dec. on Inst.’’).
`
`Weincorporate our previous analysis regarding the asserted grounds
`
`of unpatentability, and conclude that Petitioner has demonstrated a
`
`
`
`IPR2022-00205
`Patent 8,903,307 B2
`
`reasonable likelihood of prevailing with respect to at least one claim of the
`
`’307 patent challengedin the Petition for the same reasons. See Dec. on
`
`Inst. 24-38. Therefore, we determinethat the Petition warrants institution of
`
`inter partes review onall claims andall groundsasserted 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
`
`joinderis discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We
`
`determine whetherto grant joinder on a case-by-casebasis, taking into
`accountthe particular facts of each case, substantive and proceduralissues, |
`and other considerations. When exercising that discretion, we are mindful
`
`that patenttrial 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 befiled “no later than one monthafter 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 movingparty, 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 joinderis
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would haveonthetrial
`
`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 HS, available at https://www.uspto.gov/patents/
`
`ptab/ptab-e2e-frequently-asked-questions.
`
`
`
`IPR2022-00205
`Patent 8,903,307 B2
`
`Petitioner argues that joinder is appropriate becauseit “challenge([s]
`
`the sameclaims of the ’307 patent [as the Volkswagen IPR] on the same
`
`groundsrelying on the sameprior art and evidence,including a declaration
`
`identical in substance from the same [declarant].” Mot. 1-2, 5-6. Petitioner
`
`contends that joinder will not impactthe trial schedule of the Volkswagen
`
`IPR becausePetitioner is not introducing any additional evidence or issues
`
`and agreesto all applicable deadlines in the Volkswagen IPR. Id. at 5 6.
`
`Petitioner agrees to assumean “understudy role” in the Volkswagen IPR and
`
`“only assumethelead 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)].” Jd. at
`
`2. Petitioner states that it will make “consolidated filings for all substantive
`99 ¢¢
`
`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 Volkswagenin the
`99 66
`
`consolidatedfilings,”
`
`“will not seek additional depositions or deposition
`
`time,” and “will coordinate deposition questioning and hearing presentations
`
`with Volkswagen.” /d. at 2,6. Patent Owner does not oppose the Motion
`
`for Joinder. Paper 9,1.
`
`Uponconsidering the parties’ arguments and the evidence presented,
`
`weare persuadedthat it is appropriate under these circumstancesto join
`
`Petitioner to the Volkswagen IPR. Petitioner challenges the same claims
`
`that are challenged in the Volkswagen IPR on the same groundsusing the
`sameprior art and evidence. Petitioner explicitly agrees that it will take an
`“understudy role” in the Volkswagen IPR, and has shownthat thetrial
`
`schedule will not be affected at all by joinder. Thus, joinderto the
`
`
`
`IPR2022-00205
`Patent 8,903,307 B2
`
`Volkswagen IPR would result inthe just, speedy, and inexpensive resolution
`
`of Petitioner’s challenge. See 37 C.F.R. § 42.1(b).
`
`Accordingly, for the reasons discussed above, we grant Petitioner’s
`
`Motion for Joinder and join Petitioner as a party to the Volkswagen IPR.
`
`Ill. ORDER
`
`In consideration of the foregoing, il is hereby:
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 11 and 15-18 of the ’307 patentis instituted with respect to
`
`all groundsset forth in the Petition;
`
`FURTHER ORDEREDthat, pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4(b), inter partes review of the ’307 patent shall commence
`
`on the entry date of this Decision, and notice is hereby given ofthe
`
`institution of a trial;
`
`FURTHER ORDEREDthatPetitioner’s Motion for Joinder with
`
`Case IPR2021-00712 is granted, and Petitioner is hereby joined as
`
`petitioners in Case IPR2021-00712;
`
`FURTHER ORDEREDthat the grounds on whichtrial in
`
`Case IPR2021-00712 were instituted are unchanged, and no other grounds
`
`are added in Case IPR2021-00712;
`
`FURTHER ORDEREDthat the Scheduling Order entered in
`
`Case IPR2021-00712 (Paper 17) and schedule changes agreed by the parties
`
`in Case IPR2021-00712 (pursuant to the Scheduling Order) shall govern the
`
`trial schedule in Case IPR2021-00712;
`
`FURTHER ORDEREDthatPetitioner’s role in Case IPR2021-00712
`
`shall be limited as stated by Petitioner in the Motion for Joinder (Paper5,
`
`2-3, 6) unless and until Volkswagenis terminated from that proceeding;
`
`
`
`IPR2022-00205
`Patent 8,903,307 B2
`
`FURTHER ORDEREDthatthe case caption in Case IPR2021-00712
`
`shall be changedto reflect joinder of Mazda Motor of America, Inc., Subaru
`
`of America, Inc., and Volvo Car USA, LLCas petitioners in accordance
`
`with the attached example;
`
`FURTHER ORDEREDthat a copy. of this Decision be entered into
`
`the record of Case IPR2021-00712; and
`
`FURTHER ORDEREDthat all further filings shall be made in
`
`Case IPR2021-00712.
`
`
`
`IPR2022-00205
`Patent 8,903,307 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 §. 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,!
`Petitioner,
`
`V.
`
`STRATOSAUDIO,INC.,
`Patent Owner.
`
`IPR2021-00712
`Patent 8,903,307 B2
`
`! Mazda Motor of America, Inc., Subaru of America, Inc., and Volvo Car
`USA, LLC filed a motion for joinder andapetition in Case IPR2022-00205,
`which were granted, and, therefore, have been joined as petitioners in this
`proceeding.
`
`
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