`571-272-7822
`
`
`
` Paper 53
`
` Entered: January 26, 2023
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONOS, INC.,
`Petitioner,
`
`v.
`
`IMPLICIT, LLC,
`Patent Owner.
`____________
`
`IPR2018-00766 (Patent 7,391,791 B2)
` IPR2018-00767 (Patent 8,942,252 B2)1
`____________
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. MCSHANE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`MCSHANE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each
`proceeding. The parties are not authorized to use this style heading for any
`subsequent papers.
`
`
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`On November 9, 2022, the Federal Circuit issued an Order in the
`appeals concerning IPR2018-00766 and IPR2018-00767, taking note of
`Implicit, LLC’s (“Patent Owner”) request for a remand in view of
`intervening correction of inventorship certificates that Patent Owner alleged
`would serve to moot the appeals. Paper 59.2 The Order directed that
`These appeals are remanded for the sole purpose of having the
`PTAB issue an order addressing what, if any, impact the
`certificates of correction would have on the final written
`decisions in these cases. This court retains jurisdiction over the
`appeals.
`Id. at 2.
`The parties requested a conference call to discuss the procedure on
`remand. On January 25, 2023, a call was convened with counsel for Patent
`Owner and Sonos, Inc. (“Petitioner”). Patent Owner had arranged for a
`court reporter and agreed to file a copy of the transcript on the docket. We
`refer to the filed transcript for the details of the discussions during the call.
`Generally, both parties requested briefing, with opening briefs of 15 pages,
`and agreed that briefing was to be directed to the potential retroactive effect
`of the certificates of correction on the Final Written Decisions. Petitioner
`also asserted that the briefing should be permitted to identify the issues
`which had not been addressed in the Final Written Decisions if it were to be
`determined that there is retroactive effect of the certificates of correction on
`our Final Written Decisions. Neither party sought to address the merits of
`the cases as presented pre-appeal or to file additional evidence. Petitioner
`requested simultaneous opening and responsive briefing, and Patent Owner
`
`
`2 All citations are to IPR2018-00766 because the filings in IPR2018-00767
`have the same substantive content.
`
`2
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`requested that it be permitted to file an opening brief, with Petitioner filing a
`responsive brief, and with Patent Owner filing a reply.
`Under these circumstances, briefing would be helpful to the Board.
`Each party is hereby authorized to file, as set forth below, an opening brief
`on the same day not to exceed 15 pages addressing what, if any, impact the
`certificate of correction has on our Final Written Decision in each of these
`cases and a response not to exceed 7 pages that may respond only to
`arguments made in the corresponding opening brief. No additional evidence
`is to be filed and the arguments shall not address the substantive merits
`relating to antedating or unpatentability as set forth in the pre-appeal record.
`
`It is, therefore,
`ORDERED that the parties may each file an opening brief not to
`
`exceed 15 pages addressing what, if any, impact the certificate of correction
`has on our Final Written Decision in each case by February 10, 2023;
`FURTHER ORDERED that the parties may each file a response not
`to exceed 7 pages that respond only to arguments made in the corresponding
`opening brief by March 1, 2023; and
`FURTHER ORDERED that no additional evidence shall be filed and
`the arguments shall not substantively address the merits relating to
`antedating or unpatentability.
`
`
`
`
`
`
`3
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`
`PETITIONER:
`
`Rory P. Shea
`Cole B. Richter
`George I. Lee
`Michael P. Boyea
`LEE SULLIVAN SHEA & SMITH LLP
`shea@ls3ip.com
`richter@ls3ip.com
`lee@ls3ip.com
`boyea@ls3ip.com
`
`
`PATENT OWNER:
`
`Christian Hurt
`THE DAVIS FIRM, PC
`churt@davisfirm.com
`
`Timothy P. McAnulty
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`timothy.mcanulty@finnegan.com
`
`
`
`4
`
`
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