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
`__________
`
`
`Case IPR2021-00663
`Patent No. 6,411,941
`
`______________
`
`
`
`
`PATENT OWNER ANCORA’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`
`
`Table of Contents
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Table of Authorities .............................................................................................. iii
`
`List of Exhibits ..................................................................................................... vi
`
`I.
`
`II.
`
`III.
`
`Introduction ................................................................................................. 1
`
`Background.................................................................................................. 2
`
`Petitioner’s Motion for Joinder Should Be Denied for Mootness or
`Because it Will Unduly Delay the Original Proceeding................................ 6
`
`A.
`
`B.
`
`The Board Should Terminate the Original Proceeding, Which
`Would Moot this Motion.................................................................... 6
`Undue Delay in the Original Proceedings Alternatively
`Requires Denying Petitioners’ Motion for Joinder ............................. 9
`
`IV. The Board Should Exercise its Discretion to Deny this Petition ..................11
`
`A.
`
`2.
`
`3.
`
`The General Plastic Factors Favor Discretionary Denial of
`Sony’s Joinder Petition .....................................................................11
`1.
`Factor 1: Whether the Same Petitioner Previously Filed a
`Petition Directed to the Same Claims of the Same Patent .......13
`Factor 2: Whether at the Time Of Filing of the First
`Petition the Petitioner Knew of the Prior Art Asserted in
`the Second Petition or Should Have Known of It ....................13
`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 Petition .....................................................14
`Factor 4: The Length of Time That Elapsed Between the
`Time the Petitioner Learned of the Prior Art Asserted in
`the Second Petition and the Filing of the Second Petition .......14
`Factor 5: Whether the Petitioner Provides Adequate
`Explanation for the Time Elapsed Between the Filings of
`Multiple Petitions Directed to the Same Claims of the
`Same Patent ............................................................................15
`Factor 6: The Finite Resources of the Board ..........................15
`Factor 7: The Requirement Under 35 U.S.C.
`§ 316(a)(11) to Issue a final Determination Not Later
`
`4.
`
`5.
`
`6.
`7.
`
`i
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`

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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`
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`Atty. Dkt. No.: ANCC0121IPR
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`B.
`
`8.
`
`2.
`
`Than 1 Year After the Date on Which the Director
`Notices Institution of Review ..................................................16
`In Total, the General Plastic Factors Weigh Against
`Institution................................................................................16
`The Fintiv Factors Favor Discretionary Denial of Sony’s
`Petition .............................................................................................16
`1.
`Factor 1: Whether a Stay Exists or Is Likely to Be
`Granted If a Proceeding Is Instituted .......................................18
`Factor 2: Proximity of the Court’s Trial Date to the
`Board’s Projected Statutory Deadline .....................................18
`Factor 3: Investment in the Parallel Proceeding by the
`Court and Parties.....................................................................19
`Factor 4: Overlap Between Issues Raised in the Petition
`and in the Parallel Proceedings ...............................................20
`Factor 5: Whether the Petitioner and the Defendant in
`the Parallel Proceeding Are the Same Party ............................21
`Factor 6: Other Circumstances That Impact the Board’s
`Exercise of Discretion, Including the Merits ...........................21
`In Total, the Fintiv Factors Weigh Against Institution ............22
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`V.
`
`Conclusion ..................................................................................................22
`
`Certificate of Service ............................................................................................24
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 ......................................25
`
`
`
`
`
`
`
`ii
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`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Table of Authorities
`
`Cases
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
`
`IPR2016-01757 (PTAB Sep. 8, 2016) .......................................................... 7
`
`Ancora Techs., Inc. v. Apple, Inc.,
`
`774 F.3d 732 (Fed. Cir. 2014) ...................................................................... 3
`
`Ancora Techs., Inc. v. HTC Am., Inc.,
`
`908 F.3d 1343 (Fed. Cir. 2018) .................................................................... 4
`
`Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019 (PTAB Mar. 20, 2020) ......................................................17
`
`Apple Inc. v. Uniloc 2017 LLC,
`
`IPR2020-00854 (PTAB Oct. 28, 2020) .......................................................12
`
`Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131 (2016) ................................................................................17
`
`Dell Inc. v. Chrimar Sys., Inc.,
`
`IPR2016-00569 (PTAB Jan. 20, 2017) ..................................................... 3, 7
`
`HTC Corp. v. Ancora Techs. Inc.,
`
`Case No. CBM2017-00054 (PTAB Dec. 1, 2017)........................................ 4
`
`Intel Corp. v. VLSI Tech. LLC,
`
`IPR2020-00583 (P.T.A.B. October 5, 2020) ...............................................19
`
`Lenovo (U.S.) Inc. v. Neodron Ltd.,
`
`Case No. IPR2020-00729 (PTAB Aug. 3, 2020) .......................................... 6
`
`LG Elec., Inc. v. Cellular Commc'ns Equip. LLC,
`
`Case No. IPR2016-00711 (PTAB May 13, 2016) ........................................ 8
`
`LG Elecs., Inc. v. Bell Northern Research, LLC,
`
`Case No. IPR2020-00108 (PTAB May 20, 2020) ........................................ 6
`
`iii
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`

`

`Atty. Dkt. No.: ANCC0121IPR
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`Mylan Techs., Inc. v. MonoSol Rx, LLC,
`
`IPR2017-00200 (PTAB Oct. 6, 2017) .......................................................... 7
`
`Par Pharma., Inc. v. MonoSol Rx, LLC,
`
`IPR2017-01557 (PTAB June 9, 2017) ........................................................ 7
`
`Samsung Elecs. Co. Ltd. v. Ancora Techs., Inc.,
`
`Case No. IPR2020-01184 (PTAB Jan. 5, 2021) ..........................................17
`
`Samsung Elecs. Co. Ltd. v. Immersion Corp.,
`
`IPR2018-01467 (PTAB June 18, 2019).......................................................10
`
`Valve Corp. v. Elec. Scripting Prods., Inc.,
`
`Case IPR2019-00062 (PTAB Apr. 2, 2019) .......................................... 12, 13
`
`ZTE (USA) LLC, v. Seven Networks, LLC,
`
`Case No. IPR 2019-00460 (PTAB Feb. 28, 2019) ........................................ 8
`
`ZTE USA, Inc. v. Parthenon Unified Memory Architecture LLC,
`
`Case No. IPR2016-00664 (PTAB June 8, 2016) .......................................... 8
`
`
`
`Statutes
`
`35 U.S.C. § 314 ....................................................................................................17
`35 U.S.C. § 315 ................................................................................................ 9, 20
`35 U.S.C. § 316 ....................................................................................................16
`35 U.S.C. § 317 ..................................................................................................... 8
`
`
`
`Other Authorities
`
`PTAB Consolidated Trial Practice Guide (Nov. 2019),
`https://www.uspto.gov/TrialPracticeGuideConsolidated. ....................................... 8
`
`
`
`
`
`iv
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`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`
`
`Rules
`
`Atty. Dkt. No.: ANCC0121IPR
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`37 C.F.R. § 42.72 ................................................................................................... 8
`
`
`
`Regulations
`
`2011 U.S.C.C.A.N. 67 ..........................................................................................17
`Consolidated Trial Practice Guide, November 2019 .............................................17
`H.R. Rep. No. 112–98, pt. 1 (2011) ......................................................................17
`S. Rep. No. 110–259 (2008) ..................................................................................17
`
`
`
`
`
`
`
`v
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`

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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`
`
`List of Exhibits
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Exhibit
`No.
`2001
`
`2002
`
`2003
`
`Description
`Scheduling Order, Ancora Technologies, Inc. v.
`Sony Mobile Communications AB et al., Case No.
`19-1703-CFC (Dkt. #24)
`Sony’s Invalidity Contentions, Ancora
`Technologies, Inc. v. Sony Mobile Communications
`AB et al., Case No. 19-1703-CFC
`Sony’s Appendices A-E to Invalidity Contentions,
`Ancora Technologies, Inc. v. Sony Mobile
`Communications AB et al., Case No. 19-1703-CFC
`2004 Apple Patent L.R. 3-3 Disclosures, Ancora
`Technologies, Inc. v. Apple, Inc., Case No. 4:11-cv-
`06357 (Dkt. #171-3)
`2005 Order Setting Patent Case Schedule, Ancora
`Technologies, Inc. v. HTC America, Inc., Case No.
`2:16-cv-01919 (Dkt. # 56)
`E-mail from Canavera to trials@uspto.gov
`2006
`2007 Complaint, Ancora Technologies, Inc. v. Sony
`Mobile Communications AB et al., Case No. 19-
`1703-CFC (Dkt. # 1)
`Judge Connolly Docket Navigator Statistic
`Scheduling Order, Ancora Technologies, Inc. v. LG
`Electronics, Inc. et al., Case No. 1:20-cv-00034
`(Dkt. # 129)
`Expert Report of Suzanne Barber, Ancora
`Technologies, Inc. v. LG Electronics, Inc. et al.,
`Case No. 1:20-cv-00034
`2011 Declaration of Erez Zadok, Ancora Technologies,
`Inc. v. LG Electronics, Inc. et al., Case No. 1:20-
`cv-00034 (Dkt. # 45-1)
`Joint Claim Construction Chart, Ancora
`Technologies, Inc. v. Sony Mobile Communications
`AB et al., Case No. 19-1703-CFC (Dkt. #34, 34-1,
`34-2)
`
`2008
`2009
`
`2010
`
`2012
`
`vi
`
`Date
`Sept. 16, 2020
`
`Dec. 18, 2020
`
`Dec. 18, 2020
`
`Aug. 25, 2015
`
`Mar. 11, 2019
`
`Feb. 19, 2021
`Sept. 11, 2019
`
`Apr. 15, 2021
`Jan. 28, 2021
`
`Jan. 22, 2021
`
`Mar. 20, 2020
`
`April 6, 2021
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`
`I.
`
`Introduction
`
`Atty. Dkt. No.: ANCC0121IPR
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`Petitioners’ motion for joinder (the “Motion”) should not be granted because
`
`the Original Proceeding, IPR2020-01609, that Petitioner seeks to join will likely be
`
`terminated before the motion is fully briefed. If terminated, the Original
`
`Proceeding cannot serve as a proceeding to which this proceeding may be joined,
`
`so Petitioners’ motion for joinder will be moot. Further, if the Original Proceeding
`
`is terminated, Petitioners’ petition must be denied because Petitioner was
`
`statutorily barred from petitioning for inter partes review when it filed its petition
`
`in this proceeding.
`
`At minimum, petitioners (collectively “TCL”) in the Original Proceeding
`
`should be terminated. Without an active petitioner in the Original Proceeding, the
`
`resulting delay will prevent completion of the Original Proceeding within the
`
`statutory one-year period after institution. The undue delay alone is dispositive of
`
`Petitioner’s motion for joinder.
`
`Alternatively, the Board should exercise its discretion to deny institution of
`
`Petitioners’ petition. Petitioners’ motion for joinder should be denied for this
`
`additional reason. The Board ordered Patent Owner to brief the relevant
`
`discretionary denial factors in this opposition, granting a 7-page extension. Paper
`
`6 at 4.
`
`1
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`Case No.: IPR2021-00663
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`Atty. Dkt. No.: ANCC0121IPR
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`Under the Board’s precedential General Plastic factors, Sony’s petition
`
`constitutes an improper serial attack on the ’941 patent. Petitioners have long been
`
`aware of the references asserted in its petition but chose not to assert grounds
`
`based on these references. The Board denied petitions filed by multiple other
`
`accused infringers of the ’941 patent. Moreover, Petitioners moved for joinder
`
`after Patent Owner and original petitioner TCL had settled their dispute.
`
`The petition should alternatively be discretionarily denied under the Board’s
`
`precedential Fintiv factors. The sole ground is based on prior art references (i.e.,
`
`Hellmann and Chou) that Sony is relying on in the underlying district court
`
`litigation. Before a decision is provided in this proceeding, Sony will have: (1)
`
`submitted an expert report regarding the validity of the ’941 patent (December 21,
`
`2021); (2) completed any expert discovery regarding the validity of the ’941 patent
`
`(April 1, 2022); and (3) submitted any dispositive motion regarding the validity of
`
`the ’941 patent (May 20, 2022). (Ex. 2001 at 18-19.) The majority of the district
`
`court trial proceeding will therefore be substantively complete before a final
`
`determination in this proceeding.
`
`II. Background
`
`The ’941 patent has already withstood serial challenges before the Board and
`
`in the federal courts. Since 2008, the ’941 patent has been asserted in district court
`
`proceedings against accused infringers Microsoft Corporation, Toshiba America
`
`2
`
`

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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`Information Systems Inc., Hewlett Packard Inc., Dell Inc., Apple Inc., LG
`
`Atty. Dkt. No.: ANCC0121IPR
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`Electronics Inc., HTC America, Inc., TCT Mobile (US) Inc., Lenovo Group Ltd.,
`
`Samsung Electronics Co., Ltd., and Sony Mobile Communications AB.
`
`Responding to these accused infringers’ validity challenges, Patent Owner Ancora
`
`has successfully defended the ’941 patent in multiple forums. Relevant aspects of
`
`the ’941 patent’s litigation history is described below.
`
`In 2009, before the U.S. Patent and Trademark Office, Ancora defended the
`
`validity of the ’941 patent in ex parte Reexamination No. 90/010,560 over art
`
`asserted by Microsoft. The Examiner found claims 1–19 patentable without
`
`amendment. (Ex. 1001 at 9.) Apple asserted several challenges to the ’941
`
`patent’s validity. After the district court upheld the ’941 patent’s validity, the
`
`Federal Circuit affirmed that the claim terms “volatile memory” and “non-volatile
`
`memory” are not indefinite. Ancora Techs., Inc. v. Apple, Inc., 774 F.3d 732, 737
`
`(Fed. Cir. 2014). At the district court, Apple publicly filed invalidity contentions
`
`on August 25, 2015 that identified asserted references and partial invalidity claim
`
`charts. (Ex. 2004 at 2, 3, 31.) Apple’s asserted references included U.S. Patent
`
`Nos. 4,658,093 to Hellman and 5,892,906 to Chou, upon which LG’s joinder
`
`petition relies.
`
`Ancora sued HTC for infringement of the ’941 patent on December 15, 2016
`
`and served the complaint on HTC on December 27, 2016. HTC first challenged
`
`3
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`

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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`the ’941 patent by moving to dismiss for alleged failure to claim patent eligible
`
`Atty. Dkt. No.: ANCC0121IPR
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`subject matter. Shortly after, HTC mounted its second challenge by filing a
`
`petition for CBM review. HTC Corp. v. Ancora Techs. Inc., Case No. CBM2017-
`
`00054, Paper 1 (PTAB Dec. 1, 2017). HTC’s CBM petition asserted the ’941
`
`patent was invalid under § 101 for lack of patentable subject matter, under § 112
`
`for indefiniteness and lack of written description, and under § 103 for obviousness
`
`over European Patent Application Publication No. EP0766165 to Hasebe, in view
`
`of Desktop Management BIOS Specification Version 2.0 (Mar. 6, 1996). HTC,
`
`Paper 1 at 24–25. HTC’s CBM petition notably did not assert the Hellman or
`
`Chou references disclosed by Apple. Id. The Board denied institution of HTC’s
`
`petition. HTC, Paper 7.
`
`In the co-pending lawsuit, the court granted HTC’s motion to dismiss, but
`
`the Federal Circuit ultimately reversed on appeal. Ancora Techs., Inc. v. HTC Am.,
`
`Inc., 908 F.3d 1343 (Fed. Cir. 2018) (holding the claims are not invalid under
`
`§ 101). After remand from the Federal Circuit, the parties proceeded with
`
`discovery and claim construction briefing. Ancora Techs., Inc. v. HTC, Case No.
`
`2:16-CV-01919 (W.D.Wa.). After substantial delay, the district court held a
`
`Markman hearing on March 5, 2021. At that hearing the district court announced
`
`it will issue a claim construction order in May 2021. The court will then set a trial
`
`4
`
`

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`Patent No.: 6,411,941
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`date at least 180 days after the court enters the claim construction order. (Ex. 2005
`
`Atty. Dkt. No.: ANCC0121IPR
`
`at 2.)
`
`Ancora sued several TCL entities for infringement of the ’941 patent on
`
`August 27, 2019 and served the complaint on TCL on September 16, 2019. TCL
`
`filed an IPR petition on September 10, 2020, in IPR2020-01609, referenced herein
`
`as the “Original Proceeding.” Ancora and TCL discussed settlement and had
`
`nearly come to terms as of February 5, 2021. Before the parties finalized terms,
`
`the Board instituted trial in the Original Proceeding on February 16, 2021. Ancora
`
`and TCL came to terms settling all litigation and e-mailed the Board on February
`
`19, 2021 requesting permission to file a motion to terminate the Original
`
`Proceeding. (Ex. 2006 at 1.) Sony filed its joinder petition in this proceeding
`
`almost one month later - on March 15, 2021.
`
`Ancora sued Sony for infringement of the ’941 patent on September 11,
`
`2019. Progress in this case is underway. On December 18, 2020, Sony listed
`
`Hellman and Chou in its invalidity contentions. (Ex. 2002; Ex. 2003 at 1-2, 14-17,
`
`53.) While trial between Ancora and Sony will not occur until October 2022, most
`
`of the substantive aspects of the case will be complete before a decision in this
`
`proceeding, including: (1) submission of Sony’s claim construction briefing (May
`
`25, 2021 and June 22, 2021); (2) claim construction hearing (August 10, 2021); (3)
`
`submission of Sony’s expert report regarding the validity of the ’941 patent
`
`5
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`

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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`(December 21, 2021); (4) completion of any expert discovery regarding the
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`Atty. Dkt. No.: ANCC0121IPR
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`validity of the ’941 patent (April 1, 2022); and (5) submission by Sony of any
`
`dispositive motion regarding the validity of the ‘941 patent (May 20, 2022). (Ex.
`
`2001 at 15, 17-18, 25.)
`
`III. Petitioner’s Motion for Joinder Should Be Denied for Mootness or
`Because it Will Unduly Delay the Original Proceeding
`
`A. The Board Should Terminate the Original Proceeding,
`Which Would Moot this Motion
`
`Patent Owner Ancora has settled with the petitioner, TCL, in the Original
`
`Proceeding, and the Board authorized the parties to file a corresponding motion to
`
`terminate the Original Proceeding. If terminated, the Original Proceeding cannot
`
`serve as a proceeding to which this proceeding may be joined. See, e.g., LG Elecs.,
`
`Inc. v. Bell Northern Research, LLC, Case No. IPR2020-00108, Paper 14 (PTAB
`
`May 20, 2020) (denying motion for joinder after original proceeding was
`
`terminated); Lenovo (U.S.) Inc. v. Neodron Ltd., Case No. IPR2020-00729, Paper 9
`
`(PTAB Aug. 3, 2020) (denying motion for joinder because the original proceeding
`
`had not been instituted). Consequently, Petitioners’ motion for joinder may be
`
`moot.
`
`Complete
`
`termination of
`
`the Original Proceeding
`
`is appropriate,
`
`notwithstanding a pending motion for joinder by a time-barred petitioner. For
`
`example, in Mylan Techs., Inc. v. MonoSol Rx, LLC, IPR2017-00200, Paper 23
`
`6
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`(PTAB Oct. 6, 2017), the Board fully terminated the proceeding despite the
`
`Atty. Dkt. No.: ANCC0121IPR
`
`pending joinder request by the time-barred petitioner in Par Pharma., Inc. v.
`
`MonoSol Rx, LLC, IPR2017-01557, Paper 4 (PTAB June 9, 2017). The Board
`
`denied Par’s request to have their petition and motion for joinder decided before
`
`the Board decided whether to terminate. Mylan, paper 22 at 2. In Dell Inc. v.
`
`Chrimar Sys., Inc., IPR2016-00569, Paper 40 (PTAB Jan. 20, 2017), the Board
`
`also fully terminated despite the pending joinder request in Aerohive Networks,
`
`Inc. v. Chrimar Sys., Inc., IPR2016-01757, Paper 3 (PTAB Sep. 8, 2016).
`
`If Sony or the petitioners in IPR2021-00570, IPR2021-00581, or IPR2021-
`
`00583 believed that the grounds asserted in the Original Proceeding had merit, they
`
`should have pursued them before the statutory one-year time bar expired. The
`
`cited Hellman, Chou, and Schenck references were publicly available for each of
`
`the joinder petitioners in the records involving the ‘941 Patent litigations.
`
`Reasonable searching would have identified these references within bar dates for
`
`these petitioners, as evidenced by Apple’s reliance on Hellman and Chou in its
`
`2015 invalidity contentions. Further, Apple filed its invalidity contentions
`
`including Hellman and Chou publicly on August 25, 2015. (Ex. 2004 at 2, 3, 31.)
`
`Complete
`
`termination furthers
`
`the “strong policy reasons
`
`to favor
`
`settlement,” notwithstanding time-barred petitions such as the one filed here by
`
`LG. See ZTE (USA) LLC, v. Seven Networks, LLC, Case No. IPR 2019-00460,
`
`7
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`paper 15 (PTAB Feb. 28, 2019) (denying ZTE’s request for rehearing of the order
`
`Atty. Dkt. No.: ANCC0121IPR
`
`terminating the proceedings it sought to join). Ancora and TCL settled ongoing
`
`litigation to avoid unnecessary litigation costs. Only after that occurred did Sony
`
`file its petition and motion for joinder. As discussed further below, Sony’s late-
`
`filed me-too petition is demonstrably subject to discretionary denial under the
`
`Board’s precedent.
`
`The Board has discretion to terminate IPR proceedings after the parties file a
`
`settlement agreement. 35 U.S.C. § 317(a); see also 37 C.F.R. § 42.72. “There are
`
`strong public policy reasons to favor settlement between the parties to a
`
`proceeding.” PTAB Consolidated Trial Practice Guide, at 86 (Nov. 2019),
`
`https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
` The Board
`
`therefore
`
`terminates proceedings “after the filing of a settlement agreement, unless the Board
`
`already has decided the merits of the proceeding.” Id. Complete termination of
`
`the Original Proceeding is appropriate and consistent with the Board’s discretion to
`
`terminate. See, e.g., ZTE USA, Inc. v. Parthenon Unified Memory Architecture
`
`LLC, Case No. IPR2016-00664, Paper 10 at 3 (PTAB June 8, 2016); LG Elec., Inc.
`
`v. Cellular Commc'ns Equip. LLC, Case No. IPR2016-00711, Paper 7 at 1−2
`
`(PTAB May 13, 2016). In each of the ZTE and LG Electronic cases, the Board
`
`terminated immediately—notwithstanding third-party petitions and motions for
`
`joinder filed in related proceedings.
`
`8
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`

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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`
`
`Atty. Dkt. No.: ANCC0121IPR
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`If the Original Proceeding is terminated, Sony’s petition must be denied
`
`because Sony was statutorily barred from petitioning for inter partes review when
`
`filing a petition in this proceeding. 35 U.S.C. § 315(b). Ancora filed a complaint
`
`on September 11, 2019 against Sony for infringement of the ’941 patent. Ancora
`
`Technologies, Inc. v. Sony Corporation et al., Case No. 1:19-CV-01703 (DDE).
`
`This was more than 18 months before Sony filed its March 15, 2021 petition in
`
`this proceeding.
`
`Because complete termination of the Original Proceeding is appropriate,
`
`Petitioner’s motion would become moot and should therefore be denied.
`
`B. Undue Delay in the Original Proceedings Alternatively
`Requires Denying Petitioners’ Motion for Joinder
`
`Waiting for the Board to decide whether to institute this proceeding will
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`cause extensive delay in the Original Proceeding. Patent Owner should not bear
`
`the burden of mitigating this delay, given that Petitioners chose not to assert these
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`grounds until long past their one-year bar date and long after they were aware of
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`the asserted art.
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`If the Board chooses not to completely terminate the Original Proceeding,
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`discovery cannot proceed in the original until a new petitioner stands in for TCL.
`
`In situations where the original parties request termination of a proceeding after
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`new petitioners file motions for joinder, the Board sometimes terminates only the
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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`petitioner and vacates the scheduling order in the original proceeding because “no
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`Atty. Dkt. No.: ANCC0121IPR
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`petitioner remains.” See, e.g., Samsung Elecs. Co. Ltd. v. Immersion Corp.,
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`IPR2018-01467, Paper 19 (PTAB June 18, 2019). This effectively stays the
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`original proceeding, giving the Board time to decide whether to institute and join a
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`subsequent, identical petition. Id. A short delay may be acceptable in proceedings
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`where the motion for joinder is filed long before the motion to terminate.
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`But the Original Proceeding here will suffer an unduly long delay if the
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`Board chooses to terminate the original Petitioner TCL but maintain the Original
`
`Proceeding. Patent Owner discovery has just begun and is already stalled in view
`
`of the settlement between TCL and Ancora. TCL agreed, in its settlement
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`agreement with Ancora, not to pursue or assist others in pursuing its IPR. The
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`Original Proceeding will remain at a standstill until the Board decides whether to
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`institute this proceeding or the related joinder proceedings: IPR2021-00570,
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`IPR2021-00581, or IPR2021-00583.
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`Without an active petitioner in the Original Proceeding, the resulting delay
`
`will prevent completion of the Original Proceeding within the statutory one-year
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`period after institution. Patent Owner’s preliminary response in this proceeding is
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`due on April 23, 2021. See Paper 6 (Order on Conduct of the Proceeding). After
`
`receiving the patent owner preliminary response, the Board may require up to three
`
`months to issue a decision on institution. The resulting delay in the Original
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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`Proceeding could therefore range from at least two months minimum to nearly
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`Atty. Dkt. No.: ANCC0121IPR
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`five. This would prevent the Board from concluding this proceeding within one
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`year of institution.
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`Patent Owner has a unique need for a preliminary response in this
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`proceeding and the related joinder proceedings. In the Original Proceeding, Patent
`
`Owner chose to respond with a simple argument based on claim constructions
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`issued in related district court proceedings. Patent Owner did not file an expert
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`declaration. The Board rejected Patent Owner’s preliminary response argument in
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`the Original Proceeding. In this proceeding, Patent Owner intends to offer a
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`fulsome preliminary response showing the lack of merit in the asserted ground.
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`If Sony or the joinder petitioners wanted review of the grounds asserted in
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`TCL’s petition, they could have filed timely petitions when they had the
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`opportunity. They did not. The timing problems here were caused by Sony’s own
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`delay.
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`IV. The Board Should Exercise its Discretion to Deny this Petition
`
`A. The General Plastic Factors Favor Discretionary Denial of
`Sony’s Joinder Petition
`
`Binding precedent favors exercising the Board’s discretion to deny Sony’s
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`petition in this proceeding. The Board uses the seven General Plastic factors
`
`discussed below to evaluate “the potential impacts on both the efficiency of the
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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`inter partes review process and the fundamental fairness of the process for all
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`Atty. Dkt. No.: ANCC0121IPR
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`parties.” General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
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`Paper 19 at 16–17 (PTAB Sep. 6, 2017) (precedential); see also PTAB
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`Consolidated Trial Practice Guide, at 56–57. When different petitioners challenge
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`the same patent, the Board considers the relationship, if any, between those
`
`petitioners when weighing the General Plastic factors. Valve Corp. v. Elec.
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`Scripting Prods., Inc., Case IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019)
`
`(precedential) (denying institution of a follow-on petition filed by a co-defendant).
`
`Motions for joinder are not a second opportunity for review at the PTAB,
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`where the joinder petitioner has previously filed its own petition. Apple Inc. v.
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`Uniloc 2017 LLC, IPR2020-00854, Paper 9 at 4 (PTAB Oct. 28, 2020)
`
`(precedential). In Uniloc 2017, the Board denied joinder even though the
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`petitioner would serve as an “understudy” in the existing proceeding. The Board
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`reasoned that “the copied petition” would improperly allow Petitioner to “stand in
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`to continue a proceeding that would otherwise be terminated.” Id. The same
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`reasoning applies to the Sony and the petitioners in the related joinder proceedings.
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`Sony had the ability to challenge the patent in the PTAB, it pursued invalidity in
`
`the district court instead.
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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`Atty. Dkt. No.: ANCC0121IPR
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`1.
`
`Factor 1: Whether the Same Petitioner Previously Filed
`a Petition Directed to the Same Claims of the Same
`Patent
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`Similarly situated petitioners have challenged the ’941 patent at the PTAB
`
`and in other forums. When different petitioners challenge the same patent, the
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`Board considers any relationship between those petitioners when weighing the
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`General Plastic factors. Valve, Case IPR2019-00062, Paper 11 at 9. Prior
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`petitioners at the PTAB have included Apple, in CBM2016-00023; HTC, in
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`CBM2017-00054; and Samsung, in IPR2020-01184. In addition, Microsoft
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`unsuccessfully requested ex parte reexamination of
`
`the ’941 patent
`
`in
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`Reexamination No. 90/010,560. These accused infringers sell similar, competing
`
`products and are consequently motivated to pursue similar approaches to
`
`invalidating the ’941 patent—as evidenced by the flurry of me-too petitions filed
`
`after institution of IPR2021-01609. Even though Sony has not previously filed a
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`petition directed to the same claims of the ’941 patent when it had the opportunity
`
`to do so, this factor is neutral at minimum or weighs against institution.
`
`2.
`
`Factor 2: Whether at the Time Of Filing of the First
`Petition the Petitioner Knew of the Prior Art Asserted in
`the Second Petition or Should Have Known of It
`
`Sony knew or should have known long ago about the art it now asserts.
`
`Sony has not argued that it was unaware of the art it now asserts in its petition.
`
`The relevant facts are indistinguishable from Apple’s circumstances in Uniloc
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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`2017. See Uniloc 2017, Paper 9 at 5. There, despite filing an earlier petition for
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`Atty. Dkt. No.: ANCC0121IPR
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`inter partes review, Apple failed to explain how and when it came to know about
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`the prior art asserted in its joinder petition. Id. at 9. As discussed above, public
`
`record from Ancora v. Apple makes clear that the Hellman and Chou references
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`were publicly available and were likely known when Sony served its invalidity
`
`contentions in the underlying district court litigation on December 18, 2020. (See
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`Ex. 2004). This factor weighs against institution.
`
`3.
`
`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 Petition
`
`Sony has benefitted from petitions and corresponding responses filed in
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`prior proceedings, including CBM2016-00023, filed by Apple; CBM2017-00054,
`
`filed by HTC; and IPR2020-01184, filed by Samsung. Ancora filed a complete
`
`preliminary response in each of these proceedings, addressing the merits. This
`
`factor weighs against institution.
`
`4.
`
`Factor 4: The Length of Time That Elapsed Between the
`Time the Petitioner Learned of the Prior Art Asserted in
`the Second Petition and the Filing of the Second Petition
`
`Sony has not identified