IPR2021-00663
`Patent No. 6,411,941
`Petitioners’ Reply In Support Of Motion For Joinder
`Attorney Docket: SONYNJ 7.1R-015
`
`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’ REPLY IN SUPPORT OF MOTION FOR
`JOINDER UNDER 35 U.S.C. § 315(c), 37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`
`
`Patent No. 6,411,941
`Petitioners’ Reply In Support Of Motion For Joinder
`Attorney Docket: SONYNJ 7.1R-015
`
`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’ REPLY IN SUPPORT OF MOTION FOR
`JOINDER UNDER 35 U.S.C. § 315(c), 37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`
`
`
`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`JOINDER SHOULD BE GRANTED
`PRIOR TO TERMINATION .......................................................................... 1
`
`III. THE EXPEDITED SCHEDULE
`ADDRESSES ALLEGED DELAY ................................................................ 3
`
`IV. THE GENERAL PLASTICS
`FACTORS FAVOR INSTITUTION .............................................................. 3
`
`V.
`
`THE FINTIV FACTORS WEIGH IN FAVOR OF INSTITUTION .............. 5
`
`
`
`
`
`
`
`
`
`i
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`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`CASES
`
`Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
`IPR2016-01757, Paper 9 (Dec. 14, 2016) ............................................................ 2
`
`Apple Inc. v. Uniloc 2017,
`IPR2020-00854, Paper 9 (Oct. 28, 2020) ............................................................. 3
`
`AT&T Servs., Inc. v. Convergent Media Sols., LLC,
`IPR2017-01237, Paper 10 (May 10, 2017) ........................................................... 2
`
`BMW v. Paice,
`IPR2020-01386, Paper 13 (Feb. 5, 2021) ............................................................. 4
`
`Facebook, Inc. v. Windy City Innovations, LLC,
`IPR2017-00624, Paper 8 (May 31, 2017) ............................................................. 2
`
`Garmin Int’l, Inc. v. Koninklijke Philips N.V.,
`IPR2020-00754, Paper 11 (Oct. 27, 2020) ........................................................... 7
`
`HIP, Inc. v. Hormel Foods Corp.,
`1-18-cv-00615 (May 16, 2019) ............................................................................. 6
`
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00583, Paper 22 (Oct. 5, 2020) ............................................................. 6
`
`LG Elecs., Inc. v. Cellular Commc’ns Equip. LLC,
`IPR2016-00711, Paper 7 (May 13, 2016) ............................................................. 2
`
`MediaTek Inc. v. Bandspeed, Inc.,
`IPR2015-00314, Paper 20 (Sept. 17, 2015) ...................................................... 2-3
`
`Mylan Techs. Inc. v. MonoSol Rx, LLC,
`IPR2017-00200, Paper 19 (Sept. 29, 2017) .......................................................... 2
`
`Nintendo v. Babbage Holdings, LLC,
`IPR2015-00568, Paper 12 (Mar. 18, 2015) .......................................................... 3
`
`
`
`ii
`
`
`
`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
`
`Par Pharm., Inc. v. MonoSol Rx, LLC,
`IPR2017-01557, Paper 8 (Sept. 19, 2017) ............................................................ 2
`
`Qualcomm Inc. v. Monterey Research, LLC,
`IPR2020-01491, Paper 10 (Mar. 8, 2021) ............................................................ 4
`
`RetailMeNot, Inc. v. Honey Sci. LLC,
`1-18-cv-00937 (May 27, 2020) ............................................................................. 6
`
`Thryv, Inc. v. Click-to-Call Techs., LP,
`140 S.Ct. 1367 (2020) ........................................................................................... 2
`
`Trs. of Columbia Univ. v. Illumina, Inc.,
`1-19-cv-01681 (Feb. 18, 2021) ............................................................................. 6
`
`Valve Corp. v. Elec. Scripting Prods., Inc.,
`IPR2019-00062, Paper 11 (Apr. 2, 2019) ............................................................. 3
`
`ZTE USA, Inc. v. Parthenon Unified Memory Architecture LLC,
`IPR2016-00664, Paper 10 (June 8, 2016) ............................................................. 3
`
`ZTE (USA) LLC v. Seven Networks,
`IPR2019-00412, Paper 12 (Feb. 28, 2019) ........................................................... 2
`
`ZTE (USA) LLC v. Seven Networks, LLC,
`IPR2019-00460, Paper 18 (June 6, 2019) ............................................................. 1
`
`
`
`
`
`
`
`iii
`
`
`
`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
`I.
`
`INTRODUCTION
`
`The discretionary factors and equities favor granting Petitioners’ (“Sony”)
`
`joinder motion. Ancora is a nonpracticing entity, asserting a patent that expired on
`
`October 1, 2018, against Sony and other consumer electronics companies. The long
`
`history of lawsuits by Ancora as well as recent settlement with TCT, shortly after
`
`the PTAB instituted an IPR proceeding in an effort to quell a strong challenge to the
`
`’941 Patent’s validity, justify granting Sony’s joinder motion. Sony has not
`
`previously filed a petition against the ’941 Patent. The underlying litigation is in
`
`early stages of discovery and would not go to trial until at least October 2022. While
`
`two parties have opted to settle, Sony, LGE, HTC, and Lenovo continue to litigate,
`
`in three different courts, and most notably the Board has already determined in
`
`IPR2020-01609 that the prior art is likely to invalidate all challenged claims. Here,
`
`the public policies of promoting patent quality and fostering settlement can both be
`
`achieved by granting Sony’s joinder petition and then dismissing TCT from the IPR
`
`proceedings. Weighing all relevant factors, the Board should allow joinder by Sony.
`
`II.
`
`JOINDER SHOULD BE GRANTED PRIOR TO TERMINATION
`
`The Board decides joinder motions “on a case-by-case basis upon
`
`consideration of the totality of the circumstances.” ZTE (USA) LLC v. Seven
`
`Networks, LLC, IPR2019-00460, Paper 18, at 6 (June 6, 2019).
`
`The decisions Ancora cites for the proposition that Sony’s joinder petition
`
`should be denied as moot are factually distinct. In ZTE, joinder was denied where
`
`
`
`
`
`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
`
`settlement terminated 14 IPRs filed by one party, 11 IPRs filed by another party,
`
`ZTE (USA) LLC v. Seven Networks, IPR2019-00412, Paper 12, at 4 (Feb. 28, 2019),
`
`and where ZTE could not have assumed an understudy role due to confidentiality
`
`and RPI issues. Id. at 7. Sony has not filed a prior petition or engaged in extreme
`
`dilatory behavior as in Mylan Techs. Inc. v. MonoSol Rx, LLC, IPR2017-00200,
`
`Paper 19, a 6 (Sept. 29, 2017) (Dr. Reddy’s prior IPR denied) or Par Pharm., Inc. v.
`
`MonoSol Rx, LLC, IPR2017-01557, Paper 8, at 25-26 (Sept. 19, 2017) (three-year
`
`delay in filing). Nor did Sony seek to vacate a termination decision after its petition
`
`was denied as in LG Elecs., Inc. v. Cellular Commc’ns Equip. LLC, IPR2016-00711,
`
`Paper 7, at 3-4 (May 13, 2016). In Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
`
`IPR2016-01757, Paper 9, at 5 (Dec. 14, 2016), Chrimar argued joinder petitions
`
`were not exempted from the § 315(b) time limit, an interpretation that courts have
`
`since rejected. Thryv, Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367, 1374 (2020).
`
`Instead, this case is similar to those in which joinder petitions did not
`
`“introduce any new issues or argument” or present any other complications, and thus
`
`allowing joinder and terminating only as to the original petitioner would serve the
`
`“just, speedy, and inexpensive” resolution of proceedings. Facebook, Inc. v. Windy
`
`City Innovations, LLC, IPR2017-00624, Paper 8, at 8-9 (May 31, 2017) (granting
`
`joinder and terminating original petition); AT&T Servs., Inc. v. Convergent Media
`
`Sols., LLC, IPR2017-01237, Paper 10, at 23-28 (May 10, 2017) (same); MediaTek
`
`
`
`2
`
`
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`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
`
`Inc. v. Bandspeed, Inc., IPR2015-00314, Paper 20, at 3 (Sept. 17, 2015) (declining
`
`to dismiss joinder IPRs, later granted); Nintendo v. Babbage Holdings, LLC,
`
`IPR2015-00568, Paper 12 (Mar. 18, 2015) (termination as to original petitioner
`
`simplifies proceedings and favors joinder). Cf. ZTE USA, Inc. v. Parthenon Unified
`
`Memory Architecture LLC, IPR2016-00664, Paper 10 (June 8, 2016) (terminating
`
`original IPRs but allowing petitioner to refile joinder motions to join other identical
`
`petitions).
`
`III. THE EXPEDITED SCHEDULE ADDRESSES ALLEGED DELAY
`
`Ancora wrongly asserts that waiting for the Board to decide to institute will
`
`cause extensive delay. Any delay would be minimal as the Board issued an expedited
`
`briefing schedule, Ancora submitted its new preliminary response on April 23, Sony
`
`agreed to adhere to the operative schedule, and Judge Chang noted “I think we can
`
`safely say it wouldn’t take the full amount of time.” (Ex. 1016, at 18:9-11.)
`
`IV. THE GENERAL PLASTICS FACTORS FAVOR INSTITUTION
`
`Factor 1 favors institution. Ancora concedes Sony has not previously filed a
`
`petition challenging the ’941 Patent and Sony does not have a “significant
`
`relationship” with any entities that did. Cf. Valve Corp. v. Elec. Scripting Prods.,
`
`Inc., IPR2019-00062, Paper 11, at 10 (Apr. 2, 2019); Apple Inc. v. Uniloc 2017,
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`IPR2020-00854, Paper 9, at 4 (Oct. 28, 2020). Sony is neither a co-defendant with
`
`any other petitioners nor has it contributed to or coordinated with their IPR filings.
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`3
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`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
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`Such circumstances weigh “strongly against discretionary denial of the Petition.”
`
`Qualcomm Inc. v. Monterey Research, LLC, IPR2020-01491, Paper 10, at 10 (Mar.
`
`8, 2021). Ancora cannot complain that “[s]imilarly situated petitioners” have
`
`challenged the ’941 Patent, IPR2021-00663, Paper 10, at 13, where it has sued ten
`
`different parties in lawsuits staggered over a dozen years, id. at 2-3. When previous
`
`challenges result from patent owners’ drawn-out litigation activity, it weighs in favor
`
`of institution. See BMW v. Paice, IPR2020-01386, Paper 13, at 26 (Feb. 5, 2021).
`
`Factors 2 and 4 also favor institution. Ancora argues that Sony should have
`
`known about the prior art in this petition from Apple’s 2015 invalidity contentions
`
`(Ex. 2004) but presents no evidence of Sony’s alleged prior notice or that Sony was
`
`aware of the ’941 Patent prior to the lawsuit. In fact, Ancora chose to wait until about
`
`a year after the ’941 Patent expired to sue Sony despite the public launch of Sony’s
`
`Xperia S smartphone at the January 2012 CES and its accused Xperia E in 2013.
`
`The cited Apple filing (Ex. 2004) included a total of about 190 prior art
`
`references—45 primary references and about 145 additional references. Hellman and
`
`Chou were included in that long list. It is unreasonable to assume that even after
`
`Sony learned about the Apple and the many other lawsuits filed by Ancora that it
`
`appreciated the relevance of Hellman and Chou. In fact, Sony first appreciated their
`
`relevance shortly before filing its invalidity contentions on December 18, 2020. See
`
`Qualcomm, IPR2020-01491, Paper 10, at 11 (“knew or should have known of the
`
`
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`4
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`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
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`prior art” factor 2 is limited and neutral when the parties “are neither the same party
`
`nor related parties”). Thus, Factors 2 and 4 favor Sony.
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`Factor 3: Ancora argues Sony benefitted from prior petitions. But Ancora did
`
`not file a preliminary response to Apple’s petition before termination in
`
`CBM2016-00023 (see Paper 6), nor did Ancora address the prior art in its
`
`preliminary response to HTC’s petition, CBM2017-00054 (Paper 6). In the Samsung
`
`IPR, the Board exercised its discretion to deny the petition under § 314(a) without
`
`reaching the prior art grounds. IPR2020-01184, Paper 11 (Jan. 5, 2021). With regard
`
`to TCT’s IPR, Sony did not receive any benefit from Ancora’s preliminary response
`
`or from the Board’s decision to institute review, because Sony raised no new
`
`invalidity positions. Thus, this factor favors Sony or is neutral.
`
`Factor 5: Ancora acknowledges that Sony did not previously file any petition.
`
`Although Sony would otherwise be time-barred, it timely filed this petition within
`
`the statutory 30 days to join IPR2020-01609. This factor is neutral.
`
`Factor 6 favors institution as the Board’s resources on Sony’s IPR would not
`
`duplicate the district court’s efforts. Construction of only one term by the Board was
`
`needed in IPR2020-01609. Factor 7 also favors institution since the date of a final
`
`written decision would only be slightly delayed and still predate the court schedule.
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`V. THE FINTIV FACTORS WEIGH IN FAVOR OF INSTITUTION
`
`Factor 1: Sony’s case is in an early stage (Ex. 2001, at 26-27) such that there
`
`
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`5
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`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
`
`is a good chance a stay would be granted (Ex. 1017). Delaware currently has a 60%
`
`success rate for stays (23 of 39). (Ex. 1018.) Even Ancora’s statistic (Ex. 2006)
`
`shows Judge Connelly granted stays 75% of the time in 2020 (3 of 4 with one being
`
`a partial stay) and 50% of the time (1 of 2) this year, denying only where the plaintiff
`
`sought a stay, Trs. of Columbia Univ. v. Illumina, Inc., 1-19-cv-01681 (Feb. 18,
`
`2021), or the PTAB denied institution, RetailMeNot, Inc. v. Honey Sci. LLC,
`
`1-18-cv-00937 (May 27, 2020), or where the PTAB had not yet ruled on the petition,
`
`HIP, Inc. v. Hormel Foods Corp., 1-18-cv-00615 (May 16, 2019) (see Ex. 1019).
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`Factor 2: Trial is not scheduled until October 17, 2022, and, as with all courts,
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`Delaware has an extensive backlog of cases due to the pandemic such that the trial
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`date will likely be much later. It only recently lifted suspension of jury trials this
`
`month. (Ex. 1020.) A final decision in this IPR would occur well before any trial.
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`Factor 3: In the Sony case, the Markman hearing is four months away, no
`
`depositions have been noticed, fact discovery closes in October 2021, and expert
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`discovery closes April 1, 2022. (Ex. 2001.) This is unlike Intel Corp. v. VLSI Tech.
`
`LLC, IPR2020-00583, Paper 22, at 7–8 (Oct. 5, 2020), where the claim construction
`
`order had issued, final contentions were served nine months prior, and expert
`
`discovery was about to close.
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`Ancora argues that Sony is offering different claim constructions in the district
`
`court case. But in granting institution, the Board only had to construe one term. A
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`6
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`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
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`party should also be free to raise indefiniteness grounds, not raisable in an IPR, as
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`Sony has (Ex. 2012, at 8-9, 13) or offer constructions to assist a jury beyond Ancora’s
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`“plain and ordinary meaning” as to most terms (id. at 7, 11-13). See Garmin Int’l,
`
`Inc. v. Koninklijke Philips N.V., IPR2020-00754, Paper 11, at 16-18 (Oct. 27, 2020)
`
`(advocating different claim construction that included indefiniteness). Further,
`
`Sony’s construction for “license record” was taken from a definition in the patent
`
`(Ex. 1001, 1:55-57) and is not inconsistent with the Board’s broader construction or
`
`its finding of a reasonable likelihood of invalidity of all challenged claims.
`
`Factor 4: Ancora concedes Sony asserted invalidity based on numerous
`
`additional, nonoverlapping references. Paper 10, at 20. Ancora wrongly asserts Sony
`
`will “unnecessarily litigate grounds related to claims 1–3, 6–14, and 16 that are
`
`substantially the same…on June 7, 2021,” citing to the schedule in the LGE case.
`
`Factor 5: The parties are the same, weighing slightly against institution.
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`Factor 6: The merits favor institution in view of the TCT institution. Ancora’s
`
`argument about Dr. Zadok does not weigh against institution. He stated no terms
`
`other than “license record” needed construction in view of the institution decision.
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`(Ex. 1015 ¶ 33.) His prior declaration in March 2020 in the LGE case that “agent”
`
`should be subject to § 112, ¶ 6 goes to invalidity and was not accepted by the court
`
`in August 2020 (Ex. 1013), seven months before institution in IPR2020-01609.
`
`Accordingly, Sony’s motion for joinder should be granted.
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`7
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`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
`
`
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`Date: April 29, 2021
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`Respectfully submitted,
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`
` /Gregory S. Gewirtz/
` Gregory S. Gewirtz (Reg. No.: 36,522)
` Jonathan A. David (Reg. No.: 36,494)
`
`Counsel for Petitioners
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`8
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`IPR2021-00663 (Patent No. 6,411,941)
`Petitioners’ Reply in Support of Motion for Joinder
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 29th day of April
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`2021, the foregoing PETITIONERS’ REPLY IN SUPPORT OF MOTION FOR
`
`JOINDER UNDER 35 U.S.C. § 315(c), 37 C.F.R. § 42.22 AND § 42.122(b) and
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`Exhibits 1017-1020 were filed via the PTAB’s E2E system and served via electronic
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`mail on the following counsel of record for Patent Owner:
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`John P. Rondini (64,949)
`Marc Lorelli (43,759)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`ANCC0121IPR@brookskushman.com
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`Date: April 29, 2021
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` /Gregory S. Gewirtz/
` Gregory S. Gewirtz
` Reg. No. 36,522
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`9
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