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 SUR-REPLY OPPOSING
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`
`
`______________
`
`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 SUR-REPLY OPPOSING
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`
`
`Table of Contents
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Table of Authorities ............................................................................................... ii
`
`List of Exhibits ..................................................................................................... iii
`
`I.
`
`II.
`
`INTRODUCTION ....................................................................................... 1
`
`PETITIONER CANNOT CONTRADICT PATENT OWNER’S
`SHOWING THAT THE GENERAL PLASTIC AND FINTIV
`FACTORS OVERWHELMINGLY FAVOR DISCRETIONARY
`DENIAL ...................................................................................................... 2
`
`A.
`
`B.
`
`The General Plastics Factors Favor Denial of Sony’s Joinder
`Petition .............................................................................................. 2
`The Fintiv Factors Favor Denial of Sony’s Joinder Petition ............... 3
`
`III. THE BOARD HAS DISCRETION AND GOOD REASON TO
`DENY PETITIONER’S MOTION FOR JOINDER ..................................... 5
`
`Certificate of Service ............................................................................................. 8
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 ....................................... 9
`
`
`
`
`
`
`
`i
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Table of Authorities
`
`Cases
`
`Page(s)
`
`ZTE (USA) LLC v. Seven Networks, LLC,
`
`Case No. IPR2019-00460, paper 18 (PTAB Jun. 6, 2019)............................ 5
`
`
`
`
`
`ii
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`List of Exhibits
`
`Atty. Dkt. No.: ANCC0121IPR
`
`
`
`Exhibit
`No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`2007
`
`2008
`2009
`
`2010
`
`2011
`
`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
`Apple Patent L.R. 3-3 Disclosures, Ancora
`Technologies, Inc. v. Apple, Inc., Case No. 4:11-
`cv-06357 (Dkt. #171-3)
`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
`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 (WDTX) (Dkt. #129)
`Expert Report of Suzanne Barber, Ancora
`Technologies, Inc. v. LG Electronics, Inc. et al.,
`Case No. 1:20-cv-00034 (WDTX)
`Declaration of Erez Zadok, Ancora
`Technologies, Inc. v. LG Electronics, Inc. et al.,
`Case No. 1:20-cv-00034 (WDTX) (Dkt. #45-1)
`
`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
`
`iii
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Exhibit
`No.
`2012
`
`2013
`
`2014
`
`Description
`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)
`Ancora’s Preliminary Response to Petition,
`Case No. IPR2020-01609 (Dkt. 6)
`Decision Granting Institution, Case No.
`IPR2020-01609 (Dkt. 7)
`Declaration of Dr. David Martin, Ph.D.
`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732
`(Fed. Cir. 2014)
`Phil Croucher, “The BIOS Companion,” Tri-
`Tam Enterprises Inc. 1997
`Telephonic Markman Hearing Tentative Ruling,
`Ancora Technologies, Inc. v. TCT Mobile (US),
`Inc. et al., Case No. 8:19-cv-02192 (CDCA)
`(Dkt. #60)
`RESERVED
`2019
`RESERVED
`2020
`RESERVED
`2021
`US Patent 6,189,146 B1 (“Misra”)
`2022
`US Patent 5,479,639 (“Ewertz”)
`2023
`2024 Microsoft Corporation’s Request for Ex Parte
`Reexamination Image File Wrapper, Control
`No. 90010560
`Final Rulings on Claim Construction, Ancora
`Technologies, Inc. v. TCT Mobile (US), Inc. et
`al., Case No. 8:19-cv-02192 (CDCA) (Dkt. #66,
`#69)
`
`2015
`2016
`
`2017
`
`2018
`
`2025
`
`Date
`April 6, 2021
`
`Dec. 17, 2020
`
`Feb. 16, 2021
`
`
`
`
`
`
`Oct. 15, 2020
`
`
`
`
`Feb. 13, 2001
`Dec. 26, 1995
`
`
`Nov. 12, 2020;
`Nov. 19, 2020
`
`
`
`iv
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`I.
`
`INTRODUCTION
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Instituting this proceeding and joining it with IPR2020-01609 would
`
`unnecessarily expend the Board’s limited resources and prolong this latest serial
`
`challenge to the ’941 patent. The discretionary denial issues in this Joinder Petition
`
`are now fully briefed and ripe for the Board’s decision; the Petition can be denied
`
`immediately.
`
`Even if trial is instituted, the Board should deny Petitioner’s motion for
`
`joinder in view of settlement in the original IPR2020-01609. The long history of
`
`challenges to the ’941 patent justify denying joinder here. Delay while IPR2020-
`
`01609 waits for decisions in this proceeding also justifies denying joinder. That
`
`proceeding has languished since February and is not proceeding. The delay will
`
`continue while this proceeding runs its natural course with the Patent Owner’s
`
`preliminary response. This will set the IPR2020-01609 proceeding back by more
`
`than two months, even if the Board decides to institute on the day after Patent
`
`Owner’s preliminary response. Petitioner cannot refute this fact, and the resulting
`
`delay would require the parties and the Board to expend additional resources to
`
`finish the proceeding before the statutory twelve-month statutory deadline on
`
`February 16, 2022.
`
`1
`
`
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`II.
`
`PETITIONER CANNOT CONTRADICT PATENT OWNER’S
`SHOWING THAT THE GENERAL PLASTIC AND FINTIV
`FACTORS OVERWHELMINGLY FAVOR DISCRETIONARY
`DENIAL
`
`Petitioner’s reply addresses the General Plastic and Fintiv factors, however
`
`this does not rebut the strong evidence favoring discretionary denial, as outlined in
`
`Patent Owner’s opposition.
`
`A. The General Plastics Factors Favor Denial of Sony’s Joinder
`Petition
`
`Regarding Factors 1, 3 and 5, Sony does not rebut the fact it did not timely
`
`file an IPR petition within the one-year statutory deadline pursuant to 35 U.S.C.
`
`§ 315(b). Sony provides no explanation why it strategically decided not to file its
`
`own petition last September. Sony has had the benefit of reviewing several prior
`
`challenges filed by Apple, in CBM2016-00023; HTC, in CBM2017-00054; and
`
`Samsung, in IPR2020-01184. After having reviewed these filings, Sony chose not
`
`to pursue its own IPR petition within the one-year statutory deadline. These factors
`
`should weigh against institution of Sony’s joinder petition.
`
`Regarding Factors 2 and 4, Sony does not address the fact that TCL's
`
`Petition relies solely on publicly available published U.S. patents. Remarkably,
`
`Sony would like this Board to believe that in the effort that it placed in defending
`
`Ancora’s claims, Sony never reviewed the prior public filings of Apple where
`
`Hellman and Chou were laid out for similarly accused infringers to review for
`
`2
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`invalidity assertions as early as August 2015. (Ex. 2004 at 2, 3, 31.) Because
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Hellman and Chou were available and could be found demonstrates these factors
`
`weigh strongly against institution.
`
`Regarding Factor 6, this Board will have to address the contrasting positions
`
`Dr. Erez Zadok (Sony’s expert) is attempting to take to support Sony’s joinder
`
`motion. (See Paper 14, p. 21.) Dr. Zadok’s contrasting positions will likely become
`
`a contested issue that will very likely expend this Board’s resources in order to
`
`resolve. This factor should weigh against institution.
`
`Regarding Factor 7, Sony admits this Board will have to at least “slightly
`
`delay” the Original Proceeding. Even a slight delay is Sony’s own doing as it
`
`chose not to timely file its own IPR petition within the statutory deadline. Any
`
`delay should therefore weigh against institution.
`
`B.
`
`The Fintiv Factors Favor Denial of Sony’s Joinder Petition
`
`The Fintiv factors also strongly favor denial of institution. With respect to
`
`Factor 1, while Ancora does not disagree that Judge Connolly may stay an
`
`underlying district court matter, it is unclear whether Judge Connolly will stay
`
`based on the present situation and facts. Since the Board cannot assess the
`
`likelihood of a stay, this factor should be neutral.
`
`Regarding Factor 2, Sony states that Ancora has no basis to speculate about
`
`the timing of its trial date for the Sony case. Yet, Sony then speculates that this
`
`3
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`IPR will likely conclude before any trial date for Sony. (Paper 14, p. 6.) But Sony
`
`Atty. Dkt. No.: ANCC0121IPR
`
`does not dispute most of the substantive portions of the underlying district court
`
`case including dispositive motions will be complete with trial being scheduled for
`
`October 2022. Because most of the substantive portions of the case will already
`
`have been completed, it is likely this case will go to trial before the conclusion of
`
`this IPR.
`
`Ancora has also had to invest significant resources in the district court
`
`proceedings. Indeed, the underlying litigation has required Ancora to expend
`
`significant resources, while Sony is content in serial attacks on the ‘941 patent to
`
`wear down its smaller adversary with its fundamentally unfair use of the court and
`
`Patent Office system. This factor therefore weighs against institution.
`
`Regarding Factor 4, Sony does not argue that there is substantial overlap
`
`between the issues raised in the TCL Petition and the invalidity arguments Sony
`
`has presented in the underlying district court litigation. Sony’s sole argument is
`
`that Ancora cited to the LGE schedule. (Paper 14, p. 7.) Yet, Sony does address
`
`nor dispute it submitted invalidity contentions in December 2020 and will be
`
`submitting an expert report on invalidity by December 21, 2021. This factor
`
`weighs against institution.
`
`Regarding Factor 6, Sony fails to address the fact that the underlying district
`
`court litigation may already address many of the issues presented in the TCL
`
`4
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`Petition based on the dispositive motions that will be filed in early 2022. Sony
`
`Atty. Dkt. No.: ANCC0121IPR
`
`also tries to side-step Dr. Zadok’s conflicting positions because they were provided
`
`“seven months before institution in IPR2020-01609.” (Paper 14, p. 7.) But, Dr.
`
`Zadok declared “under penalty of perjury” that his testimony was “true and
`
`correct.” (Ex. 2011, p. 19). Dr. Zadok’s current testimony is in direct
`
`contradiction. Dr. Zadok and Sony should not be allowed to pick-and-choose
`
`between conflicting positions in an attempt to support the present joinder petition.
`
`This factor therefore weighs against institution.
`
`In short Petitioner has not rebutted the fact that each of Factors 1–6 weigh
`
`against instituting trial. Discretionary denial is appropriate under both of the
`
`General Plastic and Fintiv precedential decisions.
`
`III. THE BOARD HAS DISCRETION AND GOOD REASON TO
`DENY PETITIONER’S MOTION FOR JOINDER
`
`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, Case No. IPR2019-00460, Paper 18 at 6 (PTAB Jun. 6, 2019). The
`
`litigation history of the ’941 patent, including the numerous challenges outlined in
`
`Patent Owner’s Opposition (Paper 10, pp. 2–4) and upcoming trials involving
`
`overlapping art justify denying joinder for this proceeding. The Board’s discretion
`
`to deny joinder, as asserted in ZTE and the other cases cited in Patent Owner’s
`
`5
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`Opposition, applies in this proceeding with equal force despite the different
`
`Atty. Dkt. No.: ANCC0121IPR
`
`underlying facts.
`
`Institution of trial in IPR2020-01609 does not place any cloud over the
`
`validity of the ’941 patent and does not require joinder here. The validity of the
`
`’941 patent has been affirmed many times, over different art that was the first
`
`choice of similarly situated infringers. Petitioner does not dispute that the Hellman
`
`reference asserted in IPR2020-01609 was publicly listed in invalidity contentions
`
`asserted against the ’941 patent as of 2015. (See Ex. 2004 at 2, 3, 31.) Each of the
`
`accused ’941 patent infringers nevertheless decided not to assert grounds of
`
`invalidity based on Hellman. Petitioner’s unexplained delay, moreover, justifies
`
`denying Petitioner’s motion for joinder. As detailed in Patent Owner’s Opposition,
`
`Petitioner waited four years after getting sued to file the Petition. (Paper 10, pp. 13-
`
`14.)
`
`IV. CONCLUSION
`
`For the reasons above and in its Opposition, Patent Owner respectfully
`
`submits that discretionary denial of the Petition is appropriate, and the Board
`
`should exercise its discretion to deny Petitioner’s motion for joinder.
`
`
`Dated: May 13, 2021
`
`
`
`
`
`Respectfully submitted,
`
`
`
` /John P. Rondini/
`John P. Rondini (Reg. No. 64,949)
`Marc Lorelli (Reg. No. 43,759)
`
`6
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Atty. Dkt. No.: ANCC0121IPR
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`Ancora Technologies Inc.
`
`
`
`
`
`7
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Certificate of Service
`
`The undersigned hereby certifies that on May 13, 2021, a copy of Patent
`
`Owner Sur-Reply Opposing Petitioners’ Motion For Joinder, was served via
`
`electronic mail
`
`to
`
`litigation@lernerdavid.com; ggewirtz@lernerdavid.com;
`
`jdavid@lernerdavid.com which goes to the counsel of record listed below:
`
`
`
`LEAD COUNSEL
`Gregory S. Gewirtz, Reg. No. 36,522
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`20 Commerce Drive
`Cranford, NJ 07016
`Tel: 908-654-5000
`ggewirtz@lernerdavid.com
`
`
`
`
`
`
`BACK-UP COUNSEL
`Jonathan A. David, Reg. No. 36,494
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`20 Commerce Drive
`Cranford, NJ 07016
`Tel: 908-654-5000
`jdavid@lernerdavid.com
`litigation@lernerdavid.com
`
`
`
`Respectfully submitted,
`
`
`
` /John P. Rondini/
`John P. Rondini (Reg. No. 64,949)
`Marc Lorelli (Reg. No. 43,759)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`Ancora Technologies Inc.
`
`
`
`8
`
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24
`
`
`
`
`This paper complies with the type-volume limitation of 37 C.F.R. § 42.24.
`
`The paper contains 6 pages (7 pages granted by the Board in Paper 6), excluding
`
`the parts of the paper exempted by §42.24(a).
`
`This paper also complies with the typeface requirements of 37 C.F.R.
`
`§ 42.6(a)(ii) and the type style requirements of § 42.6(a)(iii)&(iv).
`
`
`
`
`Dated: May 13, 2021
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
` /John P. Rondini/
`John P. Rondini (Reg. No. 64,949)
`Marc Lorelli (Reg. No. 43,759)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`Ancora Technologies Inc.
`
`9
`
`
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