UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SONY MOBILE COMMUNICATIONS AB, SONY MOBILE
`COMMUNICATIONS, INC., SONY ELECTRONICS INC., and
`SONY CORPORATION,
`
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`
`Patent Owner.
`_______________
`
`IPR2021-00663
`Patent No. 6,411,941
`_______________
`
`PETITIONERS’ MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.22, AND § 42.122(b)
`
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SONY MOBILE COMMUNICATIONS AB, SONY MOBILE
`COMMUNICATIONS, INC., SONY ELECTRONICS INC., and
`SONY CORPORATION,
`
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`
`Patent Owner.
`_______________
`
`IPR2021-00663
`Patent No. 6,411,941
`_______________
`
`PETITIONERS’ MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.22, AND § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`
` STATEMENT OF THE PRECISE RELIEF REQUESTED................................1
` ARGUMENT ..................................................................................................... 3
` Legal Standard ......................................................................................... 3
`
` Sony’s Motion for Joinder Is Timely ....................................................... 3
`
` The Four Factors Favor Joinder .............................................................. 4
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Joinder of Sony Is Appropriate Because It Will Promote an
`Efficient Determination of the Validity of the ’941 Patent
`Without Prejudice to Any Party ................................................ 4
`
`Sony’s Petition Does Not Raise Any New Grounds of
`Unpatentability and Therefore Does Not Add Additional
`Complexity to the Grounds in the TCT Petitioners’ Petition ... 6
`
`Joinder Will Not Affect the Schedule in the TCT IPR ............. 7
`
`Joinder Will Simplify Briefing Because Sony Has
`Agreed to Consolidated Filings and an Understudy Role……. 8
`
`Joinder Will Result in No Prejudice to Patent Owner............. 10
`
` INSTITUTION IS APPROPRIATE UNDER GENERAL PLASTIC ........... 10
`
` FINTIV Factors ................................................................................................ 13
`
` CONCLUSION ................................................................................................ 13
`
`
`
`
`
`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Sony Mobile Communications AB, Sony Mobile Communications, Inc., Sony
`
`Electronics Inc. (successor in interest to Sony Mobile Communications (USA), Inc.),
`
`and Sony Corporation (collectively, “Sony” or “Petitioners”) respectfully submit this
`
`Motion for Joinder, concurrently with a Petition (“Sony’s Petition”) for inter partes
`
`review of U.S. Patent No. 6,411,941 (“’941 patent”).
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Sony
`
`requests institution of an inter partes review and joinder with IPR2020-01609 (“TCT
`
`IPR”), which was instituted on February 16, 2021. TCT Mobile (US) Inc. et al. v.
`
`Ancora Technologies, Inc., IPR2020-01609, Paper 7 (PTAB Feb. 16, 2021). Sony’s
`
`Petition is essentially a copy of the TCT IPR. It includes the identical grounds
`
`presented in the TCT IPR and therefore would create no additional burden for the
`
`Board, the TCT Petitioners, the other petitioners seeking to join as discussed below,
`
`or Patent Owner if joined. Joinder would therefore lead to an efficient resolution of
`
`the validity of the ’941 patent.
`
`
`
`Sony is currently being sued by Patent Owner for infringement of the ’941
`
`patent in the District of Delaware and has not previously filed any petitions before
`
`the PTAB challenging the validity of the ’941 patent. Three other groups of
`
`defendants also being sued by Patent Owner in other district courts for infringement
`
`of the ’941 patent have filed substantially identical IPR petitions as well as motions
`
`1
`
`
`
`for joinder, including: (1) IPR2021-00570 filed on February 19, 2010 by HTC
`
`Corporation and HTC America, Inc. (“HTC Petitioners”); (2) IPR2021-00583 filed
`
`on February 23, 2021 by Samsung Electronics, Co., Ltd. and Samsung Electronics
`
`America, Inc., (“Samsung Petitioners”); and (3) IPR2021-00581 filed February 23,
`
`2021 by LG Electronics, Inc. and LG Electronics U.S.A., Inc. (“LG Petitioners”).
`
`Counsel for the Petitioners in the TCT IPR has recently indicated to Sony that
`
`the parties in the Ancora v. TCT Mobile (US) Inc., et al. lawsuit, Case No. 8:19-cv-
`
`02192-GW-AS, have reached a settlement in principle, and the TCT litigation has
`
`been stayed pending settlement as of February 23, 2021. Besides TCT, there are now
`
`four additional petitioners/defendants, i.e., the Sony, HTC, Samsung, and LG
`
`Petitioners, all with real and present interests in continuing the TCT IPR based on
`
`the grounds instituted by the PTAB in the TCT Petition.
`
`Sony stipulates that if joinder is granted, it will cooperate with TCT and/or the
`
`other petitioners in the joined proceeding, whether at hearings, at depositions, in
`
`filings, or otherwise, as outlined below. Joinder will not impact the trial schedule
`
`because the proceeding based on the TCT IPR is in its early stages.
`
`Given the similarities of the proceedings, the number of petitioners, the lack
`
`of undue prejudice to Patent Owner, and the potential benefit to the public and to the
`
`Board that would accrue by Sony’s and the other petitioner’s cooperative
`
`participation in the TCT IPR proceeding in the event that TCT Petitioners’
`
`2
`
`
`
`participation terminates, the Board should institute IPR and grant Sony’s Motion for
`
`Joinder.
`
` ARGUMENT
`
`
`
` Legal Standard
`A petitioner may request joinder, without prior authorization, up to one month
`
`after the institution date of the proceeding to which joinder is requested. 37 C.F.R. §
`
`42.122(b); Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and
`
`IPR2014-00782, Paper 5 at 3 (PTAB May 29, 2014).
`
`The Board may grant a motion for joining a petitioner for inter partes review
`
`to another inter partes review proceeding. See 35 U.S.C. § 315(c). In determining
`
`whether to exercise its discretion to grant a motion for joinder, the Board considers:
`
`(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. v. Network-1 Security Solutions, Inc.,
`
`IPR201300385, Paper 17 at 3 (July 29, 2013).
`
`
`
`Sony’s Motion for Joinder Is Timely
`
`Joinder may be requested “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). The
`
`TCT IPR was instituted on February 16, 2021. IPR2020-01609, Paper 7 (Feb. 16,
`
`3
`
`
`
`2021). Sony’s current motion is timely as it is being filed within one month of the
`
`institution date. Sony submits that the Board should not grant any motion to
`
`terminate the TCT IPR until after it rules on Sony’s joinder motion and the motions
`
`of the HTC, Samsung, and LG Petitioners also requesting joinder in IPR2021-00570,
`
`IPR2021-00581, and IPR2021-00583.
`
`
`
` The Four Factors Favor Joinder
`Each of the four factors weighs in favor of granting Sony’s Motion for Joinder.
`
`Sony’s Petition is substantively identical to the petition in the TCT IPR; it presents
`
`no new grounds of unpatentability. Joinder will have no impact on the pending
`
`schedule of the TCT IPR. Moreover, the briefing and discovery will be simplified
`
`by resolving all issues in a single proceeding.
`
`1.
`
`Joinder of Sony Is Appropriate Because It Will Promote an
`Efficient Determination of the Validity of the ’941 Patent
`Without Prejudice to Any Party
`Sony seeks to join the TCT IPR proceeding in order to ensure that an accused
`
`infringer1 with an active interest in the proceeding remains a party to this Trial if the
`
`
`
`1 Patent Owner has accused Sony of infringing the ’941 patent in a lawsuit filed in
`
`the District of Delaware, Ancora Technologies,
`
`Inc., v. Sony Mobile
`
`Communications AB et al., Case No. 19-1703 (CFC).
`
`4
`
`
`
`TCT Petitioners’ participation is terminated prior to completion. Thus, joining Sony
`
`(and the other petitioners) to the TCT IPR proceeding is the most practical way to
`
`secure the just, speedy, and inexpensive resolution of the challenge to the ’941
`
`patent. See 37 C.F.R. § 42.1(b).
`
`If Sony is joined as a party, the validity of the grounds raised in the TCT IPR
`
`can be determined in a single proceeding. Joinder is also appropriate because Sony’s
`
`petition challenges the validity of the same claims of the ’941 patent on identical
`
`grounds to those in the TCT IPR. There are no substantive differences between
`
`Sony’s and TCT’s Petition, IPR2020-01609, Paper 1 (Sep. 10, 2020). Sony also
`
`relies on substantially the same supporting evidence in its Petition as is relied on in
`
`the TCT IPR.2 A consolidated proceeding, including Sony and the TCT Petitioners,
`
`
`
`2 The supporting expert declaration of Dr. Erez Zadok submitted by Sony agrees
`
`with the facts, analysis, and conclusions of the expert declaration in the TCT IPR.
`
`The declaration of Dr. Zadok does not contain any new opinions not included in the
`
`TCT IPR expert declaration. See Everlight Elecs. Co., v. Document Security Sys.,
`
`Inc., IPR2018-01260, Paper No. 12 at 6-7 (Nov. 14, 2018) (granting motion for
`
`joinder where petitioner submitted separate but substantially identical expert
`
`declaration).
`
`5
`
`
`
`will therefore be more efficient and less wasteful, as only a single trial on these
`
`common grounds would be required. See, e.g., Oracle America Inc. v. Realtime Data
`
`LLC, IPR2016-01672, Paper 13 at 7 (PTAB Mar. 7, 2017) (noting that “joining
`
`Oracle’s identical challenges to those in the 1002 IPR will lead to greater efficiency
`
`while reducing the resources necessary from both Realtime and the Board”). The
`
`Board “routinely grants motions for joinder where the party seeking joinder
`
`introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016- 00962, Paper 12
`
`at 9 (PTAB Aug. 24, 2016) (internal quotations and citations omitted).
`
`Joining Sony as a party to the TCT IPR would promote the public interest
`
`relating to the unpatentability of the ’941 patent and not cause any undue prejudice
`
`to Ancora, the TCT Petitioners or other petitioners. Ancora, as the patent owner,
`
`must respond to the common invalidity grounds identified in the TCT and Sony’s
`
`Petitions regardless of joinder.
`
`2.
`
`Sony’s Petition Does Not Raise Any New Grounds of
`Unpatentability and Therefore Does Not Add Additional
`Complexity to the Grounds in the TCT Petitioners’ Petition
`Sony’s Petition challenges the validity of the ’941 patent on identical grounds
`
`to those in the TCT IPR. See IPR2020-01609, Paper 1 (Sep. 10, 2020). Sony’s
`
`supporting materials―including its supporting expert declaration, exhibits, and
`
`exhibit numbering―are substantially identical to those presented in the TCT IPR.
`
`6
`
`
`
`See supra n.2. While Sony uses its own expert declarant, the expert’s declaration
`
`agrees with the facts, analysis, and conclusions of the expert declaration in the TCT
`
`IPR and does not contain any new opinions not included in the TCT IPR expert
`
`declaration. See Everlight Elecs. Co., v. Document Security Sys., Inc., IPR2018-
`
`01260, Paper No. 12 at 6-7 (Nov. 14, 2018) (granting motion for joinder where
`
`petitioner submitted separate but substantially identical expert declaration). Further,
`
`unity of exhibits and exhibit numbering with the TCT IPR has been maintained.
`
`Accordingly, no new grounds are being introduced. See Sony Corp. v. Memory
`
`Integrity, LLC., IPR2015-01353, Paper No. 11 at 5-6 (PTAB Oct. 5, 2015) (granting
`
`motion for joinder where petitioners relied “on the same prior art, same arguments,
`
`and same evidence, including the same expert and a substantively identical
`
`declaration”).
`
`Therefore, consolidation of this proceeding with TCT’s via joinder of Sony’s
`
`Petition will not raise any new issues of unpatentability and will not impose any
`
`additional burden on the Board or add additional complexity to the case.
`
`3.
`
`Joinder Will Not Affect the Schedule in the TCT IPR
`
`Given that the Board recently instituted review of the TCT IPR, joinder of
`
`Sony would not affect the schedule in any forthcoming trial. Sony’s participation
`
`should result in no changes to the schedule.
`
`7
`
`
`
`Sony agrees to adhere to all applicable deadlines set forth in the TCT IPR
`
`Scheduling Order. The Patent Owner’s Response will not be affected because the
`
`issues in Sony’s Petition are identical to those in the TCT IPR petition. Patent Owner
`
`will thus not be required to provide any additional analysis or arguments.
`
`4.
`
`Joinder Will Simplify Briefing Because Sony Has Agreed to
`Consolidated Filings and an Understudy Role if TCT
`Petitioners Remain
`To further prevent joinder from imposing any burden on the TCT Petitioners
`
`or Ancora and to further ensure that there are no changes in the potential trial
`
`schedule, Sony has agreed, as long as any of the TCT Petitioners remain a party to
`
`the TCT IPR, to take an understudy role, which will simplify briefing and discovery.
`
`In this role, Sony agrees to the following conditions:
`
`(a)
`
`Sony shall not make any substantive filing and shall be bound by the
`
`filings of the TCT Petitioners, unless a filing concerns termination and settlement,
`
`or issues solely involving Sony;
`
`(b)
`
`Sony shall not present any argument or make any presentation at oral
`
`hearing unless an issue solely involves Sony, or when addressing Board-approved
`
`motions that do not affect the TCT Petitioners, or their respective position;
`
`(c)
`
`Sony shall not seek to cross-examine or defend the cross-examination
`
`of any witness, unless the topic of cross-examination concerns issues solely
`
`involving Sony;
`
`8
`
`
`
`(d)
`
`Sony shall not seek discovery from Patent Owner on issues not solely
`
`involving Sony;
`
`(e)
`
`Sony will not rely on expert testimony beyond that submitted by the
`
`TCT Petitioners unless all of the TCT Petitioners are terminated from the case prior
`
`to any necessary depositions. If the TCT Petitioners are not terminated from the case
`
`prior to any necessary depositions, Sony agrees to rely entirely on, and be bound by,
`
`the expert declarations and depositions in the TCT IPR. Sony’s expert declaration of
`
`Dr. Zadok is substantially identical to the Wolfe declaration filed by the TCT
`
`Petitioners. Dr. Zadok, would not be relied on if the TCT Petitioners continue to
`
`participate in the TCT IPR. See, e.g., Noven Pharm., Inc. v. Novartis AG, IPR2014-
`
`00550, Paper 38 at 5 (PTAB April 10, 2015). Unless and until the current petitioners
`
`in IPR2020-01609 cease to participate in the instituted TCT IPR proceeding, Sony
`
`will not assume an active role.3
`
`Accordingly, due to Sony taking only an “understudy” role, Ancora and the
`
`TCT Petitioners will only need to respond to one principal set of papers, will not
`
`
`
`3 For clarity, should the TCT Petitioners’ participation in this IPR proceeding
`
`terminate, Sony (or another joined petitioner) would take over primary responsibility
`
`for subsequent filings and discovery.
`
`9
`
`
`
`require additional time to address additional arguments, and can thus proceed with
`
`the existing trial schedule. These steps will minimize or eliminate any potential
`
`complications or delay that could potentially result from joinder. See Sony Corp. v.
`
`Memory Integrity, LLC., IPR2015-01353, Paper No. 11 at 6-7 (PTAB Oct. 5, 2015)
`
`(granting motion because “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 second petitioner agreed to “understudy” role). Sony
`
`will also abide by any additional conditions the Board deems appropriate for an
`
`“understudy” role.
`
`
`
`5.
`Joinder Will Result in No Prejudice to Patent Owner
`As noted above, Sony’s joining of the TCT IPR proceeding should not result
`
`in any prejudice to Patent Owner. No additional grounds or arguments are being
`
`introduced, no new evidence or issues are being added, and no additional discovery
`
`or briefing or oral argument should be necessary as a result of Sony’s joinder. Thus,
`
`the Patent Owner would not need to expend any additional resources beyond those
`
`required in the current TCT IPR proceeding.
`
`
`
`INSTITUTION IS APPROPRIATE UNDER GENERAL PLASTIC
`The Board should grant joinder as in AT&T Services, Inc. v. Convergent
`
`Media Sol’ns, LLC, IPR2017-01237 Paper 10 at 23-28 (PTAB May 10, 2017), where
`
`AT&T had filed a later, identical IPR petition to the IPR petition filed by Netflix,
`
`10
`
`
`
`which was instituted, but where Netflix and the patent owner were in the process of
`
`settling. In AT&T, as in the present case, (1) AT&T’s IPR petition was filed after the
`
`one-year date of service of the complaint, (2) its joinder motion was filed within the
`
`one-month date of institution of the Netflix IPR, and (3) the joinder motion was filed
`
`before the motion to terminate the Netflix IPR based on settlement. Id. at 26-27.
`
`AT&T was also subject to the same limited participation conditions in the joint
`
`proceeding while Netflix remained a petitioner as Sony has agreed to while TCT
`
`remains a petitioner. See id. at 27-28.
`
`The Petition accompanying this motion is also Sony’s first petition with
`
`regard to the ’941 Patent and not a coordinated serial attack that presents the “undue
`
`inequities and prejudices” addressed by the Board’s precedent. See General Plastic
`
`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 17–18 (PTAB
`
`Sept. 6, 2017) (Paper 19) (§ II.B.4.i precedential).
`
`Since 2008, Patent Owner has been a serial filer of patent infringement cases
`
`that assert the ’941 patent, the substance and timing of this Petition do not present
`
`undue inequities, and the General Plastic factors do not favor denial.
`
`Factor 1: Under General Plastic, factor 1 considers “whether the same
`
`petitioner previously filed a petition directed to the same claims of the same patent.”
`
`Id., at 16. Here, Sony has not previously filed any petition against the ’941 patent.
`
`11
`
`
`
`Sony and the TCT Petitioners are separate, unrelated petitioners, and are not
`
`similarly situated for purposes of Factor 1. Sony and the other Petitioners are not co-
`
`defendants in the same litigation, but rather have been sued in separate district court
`
`proceedings. Sony is not a privy to the district court litigations involving the other
`
`Petitioners, and the other Petitioners and Sony are not accused of infringing the ’941
`
`Patent based on sale of the same products. Nor have Sony or the TCT Petitioners
`
`provided any products or technology to the other leading to an allegation of
`
`infringement of the ’941 Patent. This factor weighs in favor of institution and against
`
`discretionary denial.
`
`Factors 2, 4 and 5: As to the timing examined in these factors, Sony did not
`
`previously filed a first petition prior to this petition, and while Sony became aware
`
`of the prior art references in the TCT IPR as of early 2020, it made no serial attack
`
`on the ’941 patent and has filed this IPR within the one-month time period under 37
`
`C.F.R. § 42.122(b). These factors thus weigh in favor of institution and against
`
`discretionary denial.
`
`Factor 3: As Sony did not previous file a first petition, and the other petitions
`
`previously did not address the present grounds as presented in the TCT IPR and this
`
`petition by Sony, this factor weighs in favor of institution and against discretionary
`
`denial.
`
`12
`
`
`
`Factors 6 and 7: These factors weigh in favor of institution, as there should
`
`be no material impact on the Board’s finite resources or its ability to issue a final
`
`determination on TCT’s Petition within one year.
`
` FINTIV Factors
`No stay has been requested yet in the Ancora v. Sony Delaware litigation, the
`
`case is still in its early stages of fact discovery, and the trial date is not until October
`
`17, 2022. No substantive orders related to the ’941 patent have been issued, and the
`
`parties are just starting the claim construction process with the opening brief due on
`
`April 27, 2021, the final sur-reply brief due on June 22, 2021, and a Markman
`
`Hearing currently set for August 10, 2021.
`
` CONCLUSION
`For the reasons above, Sony respectfully requests that its Petition for Inter
`
`Partes Review of the ’941 Patent be instituted and that Sony be joined to the TCT
`
`IPR proceeding IPR2020-01609.
`
`
`
`Date: March 15, 2021
`
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`Respectfully submitted,
`
`
` /Gregory S. Gewirtz/
` Gregory S. Gewirtz (Reg. No.: 36,522)
` Jonathan A. David (Reg. No.: 36,494)
` Counsel for Petitioners
`
`
`
`13
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6 and 42.105, I hereby certify that on March 15,
`
`2021, I caused a true and correct copy of the foregoing Petitioner’s Motion For
`
`Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and § 42.122(b) to be served
`
`on the Patent Owner’s counsel of record via U.S. Priority Mail Express delivery
`
`service at the following address listed on USPTO PAIR:
`
`Venable LLP
`P.O. Box 34385
`Washington, DC 20043-9998
`
`A courtesy copy was also sent via electronic mail to:
`
`Jeffri A. Kaminski
`VENABLE LLP
`600 Massachusetts Ave., N.W.
`Washington, DC 20001
`Telephone (202) 344-4000
`Facsimile (202) 344-8300
`jakaminski@Venable.com
`
`A courtesy copy was also sent via electronic mail to Patent Owner’s litigation
`
`counsel at the following addresses:
`
`John P. Rondini
`Mark A. Cantor
`John S. LeRoy
`Marc Lorelli
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`
`
`
`
`Telephone (248) 358-4400
`Facsimile (248) 358-3351
`jrondini@brookskushman.com
`mcantor@brookskushman.com
`jleroy@brookskushman.com
`mlorelli@brookskushman.com
`ANCC0120IPR@brookskushman.com
`
`Neal C. Belgam
`Eve H. Ormerod
`1000 N. West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`A courtesy copy was also sent via electronic mail to TCT Mobile (US) Inc.,
`
`Huizhou TCL Mobile Communication Co., Ltd., and Shenzhen TCL Creative Cloud
`
`Technology Co., Ltd.’s counsel at the following addresses:
`
`John P. Schnurer
`Yun (Louise) Lu
`Kyle R. Canavera
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130
`Telephone (858) 720-5700
`Facsimile (858) 720-5799
`PerkinsServiceTCL-Ancora-IPR@perkinscoie.com
`
`
`
`
`
`Respectfully submitted,
`
`Date: March 15, 2021
`
`
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`
`
` /Gregory S. Gewirtz/
` Gregory S. Gewirtz
` Reg. No. 36,522
` Lead Counsel for Petitioners
`
`
`
`
`
`
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