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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC., et al.,
`
`Petitioners
`
`v.
`
`SMARTFLASH LLC
`
`Patent Owner
`
`____________
`
`Case CBM2014-00192
`
`Patent 8,033,458
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`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`TABLE OF CONTENTS
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`PATENT OWNER’S LIST OF EXHIBITS ............................................................. ii
`
`I.
`
`II.
`
` OVERVIEW OF U.S. PATENT NO. 8,033,458 ............................................ 1
`
` THE CHALLENGED CLAIM IS NOT DIRECTED TO A FINANCIAL
`PRODUCT OR SERVICE .............................................................................. 3
`
`
`III. THE CHALLENGED CLAIM OF THE ‘458 PATENT IS A
`TECHNOLOGICAL INVENTION EXEMPT FROM CBM REVIEW ........ 8
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘458 PATENT SHOULD
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`VIOLATION OF 37 CFR 42.24(a)(iii) ........................................................... 9
`
` CLAIM 11 IS DIRECTED TO STATUTORY SUBJECT MATTER ......... 12
`
`
`V.
`
`VI.
`
`INVALIDITY IN LIGHT OF STEFIK HAS ALREADY BEEN RAISED
`IN ANOTHER PROCEEDING ..................................................................... 13
`
`
`VII. STEFIK ‘235 and STEFIK ‘980 ARE NOT A SINGLE REFERENCE ...... 14
`
`VIII. COMBINATION OF STEFIK ‘235 AND GRUSE IS UNSUPPORTED AS
`PETITIONER HAS NOT PROVEN THAT STEFIK ‘235 AND STEFIK
`‘980 ARE A SINGLE REFERENCE ............................................................ 17
`
`
`IX. GRUSE HAS NOT BEEN SHOWN TO BE 102(A) PRIOR ART
`AGAINST CLAIM 11 ................................................................................... 17
`
` CONCLUSION .............................................................................................. 20
`
`
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`- i -
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`X.
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`
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`
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`PATENT OWNER’S LIST OF EXHIBITS
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`Exhibit Number
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`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2003-2023
`
`Reserved
`
`2024
`
`Samsung’s Motion To Stay Litigation Pending CBM Review
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`
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`- ii -
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`
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`Patent Owner sets forth below, in its Preliminary Response, why no Covered
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`Business Method (CBM) review should be instituted for the patent-at-issue.
`
`Arguments presented herein are presented without prejudice to presenting
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`additional arguments in a later response should the PTAB institute a CBM review.
`
`
`
`I.
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`OVERVIEW OF U.S. PATENT NO. 8,033,458
`
`Although the claims define the actual scope of coverage of the patent, as
`
`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`the patent-at-issue, U.S. Patent No. 8,033,458 (hereinafter “the ‘458 patent”)
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`generally describes “data storage and access systems ... [and] is particularly useful
`
`for managing stored audio and video data, but may also be applied to storage and
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`access of text and software, including games, as well as other types of data.” Col.
`
`1, lines 20-28.
`
`Preferred embodiments described in the last full paragraph of col. 15
`
`illustrate this further: “FIG. 7 ... shows a variety of content access terminals for
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`accessing data supply computer system 120 over internet 142. The terminals are
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`provided with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as
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`generally described with reference to FIG. 2 and as described in more detail below.
`
`In most embodiments of the terminal the SFC interface allows the smart Flash card
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`data carrier to be inserted into and removed from the terminal, but in some
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`embodiments the data carrier may be integral with the terminal.” Exemplary
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`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
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`and mobile communications devices 152. Col. 16, lines 4-17.
`
`Referring to preferred embodiments, the ‘458 patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 23, line 63 - col. 24, line 1. Users are able to purchase content
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`from a variety of different content providers even if they do not know where the
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`content providers are located or how the content is delivered. See id. The
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`exemplary system is operated by a “content data supply ‘system owner,’” who may
`
`act as an intermediary between a user seeking to purchase content and content
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`providers, such as record labels, movie studios, and software providers. See col.
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`13, lines 60-67. When a user accesses the system, he or she is able to select
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`content to purchase or rent from a variety of different content providers. See col. 4,
`
`line 64 - col. 5, line 8. If the user finds a content item to buy, his or her device will
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`transmit stored “payment data” to a “payment validation system” to validate the
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`payment data. See col. 8, lines 3-6. The payment validation system returns proof
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`that the payment data has been validated, in the form of “payment validation data,”
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`and the user is able to retrieve the purchased content from the content provider.
`
`See col. 8, lines 7-9.
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`II.
`
`THE CHALLENGED CLAIM IS NOT DIRECTED TO A FINANCIAL
`PRODUCT OR SERVICE
`
`Samsung Electronics America, Inc., et al. (collectively “Petitioner”) has
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`cited claim 11 as being the basis for requesting that a covered business method
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`review be instituted. Petition at 6. Since claim 11 does not, in fact, meet the
`
`requirements for instituting a review, the Petition should be denied.
`
`As set forth in 37 CFR 42.301(a), to be eligible for CBM review, claim 11
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`must be found to be claiming “a method or corresponding apparatus for performing
`
`data processing or other operations used in the practice, administration, or
`
`management of a financial product or service.” In the publication of the Final
`
`Rules for “Transitional Program for Covered Business Method Patents -
`
`Definitions of Covered Business Method Patent and Technological Invention,” the
`
`PTO stated:
`
`The definition set forth in § 42.301(a) for covered business
`method patent adopts the definition for covered business method
`patent provided in section 18(d)(1) of the AIA. In administering the
`program, the Office will consider the legislative intent and history
`behind the public law definition and the transitional program itself.
`For example, the legislative history explains that the definition of
`covered business method patent was drafted to encompass patents
`“claiming activities that are financial in nature, incidental to a
`financial activity or complementary to a financial activity.” 157
`CONG. REC. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`
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`- 3 -
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`Schumer). This remark tends to support the notion that “financial
`product or service” should be interpreted broadly.
`
`
`Regardless of this explanation, it is improper for this tribunal to rely on the
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`legislative history of the AIA to determine the specific issue before it, i.e., whether
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`trial should be instituted on the present petition. The Supreme Court has “stated
`
`time and again that courts must presume that a legislature says in a statute what it
`
`means and means in a statute what it says. When the words of a statute are
`
`unambiguous, then, this first canon of construction is also the last: judicial inquiry
`
`is complete.” Connecticut Nat’l Bank v. Germain, 503 U.S. 249, 253–54 (1992).
`
`“[W]hen the language of the statute is plain, legislative history is irrelevant.”
`
`Zedner v. United States, 547 U.S. 489, 510–11 (2006) (Scalia, J., concurring-in-
`
`part). This long standing rule is based on the constitutional limitation that
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`legislators cannot achieve through floor statements what “they were unable to
`
`achieve through the statutory text.” Exxon Mobil Corp. v. Allapattah Servs., Inc.,
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`545 U.S. 546, 568 (2005). Because Section 18 is unambiguously limited to
`
`“financial product[s] and service[s],” there is no reason to look to the statements of
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`a single Senator to re-tool text that was approved by both houses of Congress and
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`signed by the President.
`
`Moreover, the PTO’s synopsis of the legislative history is an improper
`
`oversimplification and does not address that “financial product or service” was
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`intended to be interpreted narrowly. In fact, when the House of Representatives
`
`debated Congressman Schock’s Amendment to remove Section 18 in its entirety
`
`from the America Invents Act, several members of Congress discussed their
`
`understanding of that narrower interpretation. For example, Mr. Schock himself
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`discussed at the beginning of his remarks that “Section 18 carves out a niche of
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`business method patents covering technology used specifically in the financial
`
`industry and would create a special class of patents in the financial services field
`
`subject to their own distinctive post-grant administrative review.” (Exhibit 2001,
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`Congressional Record - House, June 23, 2011, H4496.) (Emphasis added.)
`
`Similarly, Congressman Shuster expressly discussed his understanding of
`
`the narrow interpretation of the legislation. He stated:
`
`Mr. Chair, I would like to place in the record my understanding
`that the definition of ‘‘covered business method patent,’’ Section
`18(d)(1) of H.R. 1249, the America Invents Act, is intended to be
`narrowly construed to target only those business method patents that
`are unique to the financial services industry in the sense that they are
`patents which only a financial services provider would use to
`furnish a financial product or service. The example that I have been
`given is a patent relating to electronic check scanning, which is the
`type of invention that only the financial services industry would
`utilize as a means of providing improved or more efficient banking
`services. In contrast, Section 18 would not encompass a patent that
`can be used in other industries, but which a financial services
`
`
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`- 5 -
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`provider might also use. Lastly, it is also my understanding from
`discussions with the Committee that Section 18 is targeted only
`towards patents for non-technological inventions.
`
`
`
`Id. at H4497. (Emphasis added.) It was based on that understanding that
`
`Congressman Shuster then voted to keep Section 18 in the bill. (See Id. at H4503.)
`
`
`
`Likewise, Congresswoman Waters discussed that Section 18 was directed to
`
`cost savings measures in the banking industry when she stated “too-big-to-fail
`
`banks ... are now coming to Congress in hopes that [Congress] will help them steal
`
`a specific type of innovation and legislatively take other financial services-related
`
`business method patents referenced in H.R. 1249, section 18. ... Financial
`
`services-related business method patents have saved financial services companies
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`billions of dollars.” Id. at H4496. See also Exhibit 2002, 157 Cong. Rec. S5428
`
`(Rep. Pryor) (“It is of crucial importance to me that we clarify the intent of the
`
`[AIA § 18] process and implement it as narrowly as possible.”)
`
`In contrast to the banking or other financial products or services patents,
`
`claim 6 recites:
`
`6. A data access device for retrieving stored data from a data
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`carrier, the device comprising:
`
`a user interface;
`
`a data carrier interface;
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`a program store storing code implementable by a processor; and
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`a processor coupled to the user interface, to the data carrier
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`interface and to the program store for implementing the stored code,
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`the code comprising:
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`code to retrieve use status data indicating a use status of data
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`stored on the carrier, and use rules data indicating permissible use of
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`data stored on the carrier;
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`code to evaluate the use status data using the use rules data to
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`determine whether access is permitted to the stored data; and
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`code to access the stored data when access is permitted.
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`
`
`Claim 11 depends from claim 6 and recites “11. A data access device according to
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`claim 6 wherein said use rules permit partial use of a data item stored on the carrier
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`and further comprising code to write partial use status data to the data carrier when
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`only part of a stored data item has been accessed.” Rather than recite the “practice,
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`administration, or management of a financial product or service,” claim 11 actually
`
`makes no mention of payment or specifics of how payment is made and focuses on
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`technical aspects of accessing data on a data carrier, e.g., code on a data access
`
`device. Claim 11, therefore, does not recite a “financial product or service” when
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`that phrase is properly construed, both under its plain meaning and in light of the
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`legislative history showing Congress’ intent of the narrow meaning of that phrase.
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`
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`III. THE CHALLENGED CLAIM OF THE ‘458 PATENT IS A
`TECHNOLOGICAL INVENTION EXEMPT FROM CBM REVIEW
`
`As set forth in 37 CFR 42.301(a), even if claim 11 was considered to be
`
`claiming “a method or corresponding apparatus for performing data processing or
`
`other operations used in the practice, administration, or management of a financial
`
`product or service,” Petitioner must show that claim 11 does not meet the
`
`exception of being directed to a technological invention. Section 42.301(b) sets
`
`forth that a claim is directed to a technological invention (and therefore not the
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`basis for instituting a CBM review) if “the claimed subject matter as a whole
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`recites a technological feature that is novel and unobvious over the prior art; and
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`solves a technical problem using a technical solution.”
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`Claim 11, as a whole, recites at least one technological feature that is novel
`
`and unobvious over the prior art and solves a technical problem using a technical
`
`solution. At least one technological problem solved by the data access device of
`
`claim 11 is retrieving stored data from a data carrier. Moreover, it does so using a
`
`technical solution, by using “code to evaluate the use status data using the use rules
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`data to determine whether access is permitted to the stored data” and “code to
`
`access the stored data when access is permitted.”
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`Sections III.D. and E. of the Petition also do not allege, much less prove, that
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`“code to evaluate the use status data using the use rules data to determine whether
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`access is permitted to the stored data” and “code to access the stored data when
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`access is permitted” were known at the time of the invention of the patent-at-issue.
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`Thus, as previously held in Epsilon Data Management, LLC et al. v. RPOST
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`Comm. Ltd., CBM2014-00017, paper 21, page 8, any analysis in any other portion
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`of the Petition (other than the portion relating to whether CBM review is proper)
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`need not be considered in determining that the Petitioner has not met its burden of
`
`proving that the claim at issue is a covered business method patent. Id. (“In
`
`addition, although Patent Owner addresses the analysis in the Declaration of
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`[Petitioner’s Declarant] (id. at 19), which Petitioner submitted with the Petition,
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`this analysis was not included in the relevant portion of the Petition (Pet. 2-6), and
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`need not be considered in determining that the ... Patent[-at-issue] is a covered
`
`business method patent.”) Thus, Petitioner has not proven that claim 11 of the
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`‘458 patent is not directed to a technological invention exempt from CBM review.
`
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘458 PATENT SHOULD
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`VIOLATION OF 37 CFR 42.24(a)(iii)
`
`The Petition under consideration (in CBM2014-00192) is one of two
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`Petitions filed by Petitioner on the same day against the same patent (i.e., the ‘458
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`patent). (The second Petition was filed in CBM2014-00197.) Both Petitions
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`include a substantial amount of overlap and are at least directed to issues of
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`invalidity in light of alleged prior art including the anticipation and obviousness of
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`claim 11 in the ‘458 patent. However, instead of filing a single Petition addressing
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`all the issues within the page limits set by the PTAB, Petitioner seeks to
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`circumvent the page limits of 37 CFR 42.24(a)(1)(iii) by filing two separate but
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`overlapping Petitions.
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`If the Petitioner was unable to file its Petition within the page limits set forth
`
`by 37 CFR 42.24(a)(1), then the Petitioner was free to file a motion to waive the
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`page limits. Section 42.24(a)(2) specifically sets forth that “Petitions to institute a
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`trial must comply with the stated page limits but may be accompanied by a motion
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`to waive the page limits. The Petitioner must show in the motion how a waiver of
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`the page limits is in the interests of justice and must append a copy of the proposed
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`petition exceeding the page limit to the motion. If the motion is not granted, the
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`proposed petition exceeding the page limit may be expunged or returned.”
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`However, the Petitioner here instead effectively sought to grant its own motion by
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`filing two allegedly separate petitions, each within the 80-page limit and without
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`showing “how a waiver of the page limits is in the interests of justice.” Clearly, if
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`there is no requirement for the Petitioner to file its allegations of invalidity over
`
`alleged prior art in a single Petition meeting the page limits set forth by the PTAB,
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`- 10 -
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`the requirements of Section 42.24(a)(2) are meaningless. Thus, Petitioner’s two
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`Petitions in CBM2014-00192 and -00197 should be treated as a single Petition
`
`beyond the page limits set forth by 37 CFR 42.24(a)(1), and each should be denied
`
`on that basis alone.
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`Moreover, allowing more than one CBM request on the same patent by a
`
`single Petitioner is counter to “the just, speedy, and inexpensive resolution of every
`
`proceeding” and invites an unending stream of Petitions filed by Petitioners in an
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`effort to drown the Patent Owner’s patents in administrative proceedings, as indeed
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`has happened in the case of this patent family. The PTAB has previously allowed
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`another petitioner to file multiple CBMs against a single patent in the patent family
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`of the patent under review. See CBM2014-00102 and -00103 for 8,118,221,
`
`CBM2014-00104 and -00105 for 7,334,720, CBM2014-00106 and -00107 for
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`8,033,458 (the patent under review), CBM2014-00108 and -00109 for 8,061,598,
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`CBM2014-00110 and -00111 for 8,336,772 and CBM2014-00112 and -00113 for
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`7,942,317. However, the result has been a continuing barrage of filings such that
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`the other petitioner subsequently filed another 9 petitions against the same six
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`patents – at least one additional petition for each patent, and, in the cases of
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`7,334,720 and 8,336,772, two and three more petitions each, respectively.
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`Together with the ten petitions for the present Petitioner, the six patents in the
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`patent family under review have now been subject to 31 different petitions. Thus,
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`- 11 -
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`of the 277 petitions filed through the end of 2014, 31/277 or more than 11% of all
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`CBMs ever filed have targeted only six patents belonging to the same assignee.
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`Clearly, the PTAB should enforce the single Petition requirements in order to meet
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`the requirements of 37 C.F.R. 42.1 that requires “the just, speedy, and inexpensive
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`resolution of every proceeding.”
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`CLAIM 11 IS DIRECTED TO STATUTORY SUBJECT MATTER
`
`Petitioner alleges that Claim 11 is “patent ineligible under 35 U.S.C. § 101.”
`
`
`
`V.
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`
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`Petition at 19-34. Petitioner further argues that “claim 11 of the ‘458 Patent is
`
`invalid because it does not include any limitations that do more than the abstract
`
`idea of regulating authorized use of information.” Id. at 30. However, such an
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`assertion is made without any reference to claim 11 that, in fact, shows the
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`challenged claim actually is directed to a more narrow invention than “regulating
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`authorized use of information,” in general. Claim 6 recites “code to evaluate the
`
`use status data using the use rules data to determine whether access is permitted to
`
`the stored data.” Claim 11 depends from claim 6 and further includes the
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`limitation of “code to write partial use status data to the data carrier when only part
`
`of a stored data item has been accessed.” Given that one could still “regulat[e]
`
`authorized use of information” without, for example, “code to evaluate the use
`
`status data using the use rules data to determine whether access is permitted to the
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`stored data” or “code to write partial use status data to the data carrier when only
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`part of a stored data item has been accessed,” it can be seen that claim 11 is not
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`preemptory as asserted and is, at least for that reason, directed to statutory subject
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`matter.
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`
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`VI.
`
`INVALIDITY IN LIGHT OF STEFIK HAS ALREADY BEEN RAISED
`IN ANOTHER PROCEEDING
`
`Petitioner contends that WO/00/08909 (“Gruse”) in combination with Stefik
`
`‘235 (i.e., U.S. Patent No. 5,530,235) renders obvious claim 11. Petition at 35.
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`However, in CBM2014-00106 (which was subsequently consolidated with
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`CBM2014-00107), an earlier petitioner already raised the issues of: (1) anticipation
`
`of claim 11 in light of Stefik ‘235, (2) obviousness of claim 11 in light of Stefik
`
`‘235 and Stefik ‘980 (U.S. Patent No. 5,629,980), and (3) obviousness of claim 11
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`in light of Stefik ‘235, Stefik ‘980 and two other references individually. When
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`enacting the post-grant review proceedings, Congress explicitly sought to protect
`
`patent owners from serial attacks, such as this one, by including 35 U.S.C. 325(d)
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`that provides in pertinent part “In determining whether to institute or order a
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`proceeding …, the Director may take into account whether, and reject the petition
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`or request because, the same or substantially the same prior art or arguments
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`previously were presented to the Office.” In this case, the same prior art, Stefik
`
`‘235, has been applied to the same claim (i.e., claim 11) in both the current
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`proceedings and CBM2014-00106. Indeed, Petitioner was not only aware of the
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`contents of the CBM2014-00106 Petition prior to filing this Petition, Petitioner
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`even agreed in litigation to be bound by the results of that proceeding if the Texas
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`litigation was to stayed. See footnote 4, page 3 of Exhibit 2024 (“should the Court
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`grant Defendants’ Motion To Stay Pending CBM review, the present Defendants
`
`would stipulate to be bound to the same extent as Apple is under § 18(a)(1)(D) of
`
`the America Invents Act”). Thus, the Director should reject the petition under 35
`
`U.S.C. 325(d) as well.
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`
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`VII. STEFIK ‘235 and STEFIK ‘980 ARE NOT A SINGLE REFERENCE
`
`The Petition alleges at page 40 that “Stefik ’235… incorporates Stefik ’980.”
`
`However, Petitioner has not proven that the alleged incorporation by reference in
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`the ‘235 patent is sufficient to support a finding that the ‘235 and ‘980 patents
`
`should be considered a single reference. The ‘235 patent states, at col. 2, lines 48-
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`53, that “The currently preferred embodiment of a DocuCard is an instance of a
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`repository, as defined in co-pending application entitled ‘System for Controlling
`
`the Distribution and Use of Digital Works,’ serial number not yet assigned, which
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`is assigned to the assignee of the present invention and which is herein
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`incorporated by reference.” However, such a reference does not meet the MPEP’s
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`standard for incorporation by reference. MPEP 608.01(p) (Sixth Ed., Jan. 1995)
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`set forth the procedure for incorporation by reference at the time the ‘235 patent
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`was filed. As specified in the MPEP on page 600-55, left column, lines 11-13, “In
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`addition to other requirements for an application, the referencing application
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`should include an identification of the referenced patent, application, or
`
`publication.” The Petitioner has not established that a reference to “co-pending
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`application entitled ‘System for Controlling the Distribution and Use of Digital
`
`Works,’ serial number not yet assigned, which is assigned to the assignee of the
`
`present invention,” actually identifies the referenced application. For example, the
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`application is not referenced by application serial number, filing date, inventors or
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`attorney docket number.
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`As set forth in In re Fouche, 169 USPQ 429 (CCPA 1971), when the issue
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`arises as to whether an incorporation by reference is proper, the test is “whether the
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`original referring language was adequate to effect an incorporation by reference” --
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`a test which is resolved by determining whether the application allegedly
`
`incorporated by reference is distinguished “from all others.” Id. at 431. Petitioner,
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`which bears the burden of proof on the issue, has not proven that the application is
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`distinguished from all others (e.g., by a declaration from Stefik describing that the
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`‘980 patent is the only such application). Thus, the alleged incorporation by
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`reference is not proper, and the ‘235 and ‘980 patents should not be considered a
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`single reference.
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`Furthermore, the Petition does not allege that if Stefik ‘235 does not
`
`properly incorporate Stefik ‘980 by reference that it would have been obvious to do
`
`so. As a result, any reliance by the Petition on Stefik ‘980 is an acknowledgment
`
`that the combination of Gruse and Stefik ‘235 does not actually render obvious
`
`claim 11. See, e.g., Petition at 41 (citing Stefik ‘980: Abstract), Petition at 46
`
`(citing Stefik ‘980: FIG. 12; 6:58-61; 7:46-55; 13:43-46), Petition at 48 (citing
`
`Stefik ‘980:16:43-51), Petition at 50 (citing Stefik ‘980: FIG. 12 and 14:11-50),
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`Petition at 52 and 53 (citing Stefik ‘980: Fig. 12; 14:11-50), Petition at 55 (citing
`
`Stefik ‘980: FIG. 7, 9:59-60), Petition at 56-57 (citing Stefik ‘980: FIGS. 15, 18;
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`Abstract; 6:42-45; 7:24-26; 7:59-61; 9:26-29; 10:28-32 and Table 1; 11:59-12:7;
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`14:15-27; 17:66- 18:6; 19:12-15; 31:26-28), Petition at 58 (citing Stefik ‘980:
`
`Abstract; 7:23-33; 30:61-64), Petition at 59 (citing Stefik ‘980: 32:22-47; 21:10-
`
`14). Moreover, as described in the first full paragraph of the Petition at 43, the
`
`discussion of the external interface, which is the reason for combining Gruse with
`
`Stefik ‘235, is actually found in Stefik ‘980 (“Stefik ‘980 at FIGS. 2, 12, 7:43-56;
`
`14:11-50 (discussing external interface 1206 such as RS-232, PCMCIA, or
`
`FDDI).”).
`
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`- 16 -
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`
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`VIII. COMBINATION OF STEFIK ‘235 AND GRUSE IS UNSUPPORTED AS
`PETITIONER HAS NOT PROVEN THAT STEFIK ‘235 AND STEFIK
`‘980 ARE A SINGLE REFERENCE
`
`Starting at page 35, the Petition alleges that claim is obvious based on Gruse
`
`in combination with Stefik ‘235. As described in Section VII. above, Petitioner
`
`has not proven that the ‘235 and ‘980 patents are a single reference. As such, the
`
`Petition has not provided sufficient evidence that one of ordinary skill in the art
`
`would have combined Gruse with the ‘235 and ‘980 patents.
`
`
`
`IX. GRUSE HAS NOT BEEN SHOWN TO BE 102(A) PRIOR ART
`AGAINST CLAIM 11
`
`The Petition alleges that “Gruse ... qualifies as prior art under 35 U.S.C.
`
`
`
`§ 102(a)” and discusses various dates (e.g., filing dates of priority applications)
`
`related to Gruse. Petition at 4. However, the only relevant date with respect to
`
`Gruse is its publication date: February 24, 2000. Gruse is not alleged to be prior
`
`art under 35 U.S.C. § 102(e), and even if it was alleged to be so, prior art under 35
`
`U.S.C. § 102(e) is improper in CBM proceedings. See Meridianlink, Inc. v. DH
`
`Holdings, LLC, CBM2013-00008, Paper 24 (Sept. 12, 2013) (citing Section
`
`18(a)(1)(C) of the America Invents Act).
`
`
`
`In order to attempt to overcome the fact that the publication date of Gruse
`
`(i.e., Feb. 24, 2000) is after the filing date (i.e., Oct. 25, 1999) of the Great Britain
`
`priority document (Exhibit 1008) to which priority is claimed, the Petition alleges
`
`
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`- 17 -
`
`
`
`that claim 11 is not entitled to the filing date of the Great Britain priority
`
`document. However, Petitioner has not met its burden of proof to establish that
`
`claim 11 is not entitled to the filing date of the Great Britain priority document.
`
`
`
`The Petition alleges that the Great Britain application “fails to support many
`
`limitations recited in the Challenged Claim” and states that claim 6 (from which
`
`claim 11 depends) recites:
`
`code to retrieve use status data indicating a use status of data
`
`stored on the carrier, and use rules data indicating permissible use of
`
`data stored on the carrier;
`
`code to evaluate the use status data using the use rules data to
`
`determine whether access is permitted to the stored data; and
`
`code to access the stored data when access is permitted.
`
`See Petition at 17-18. The Petition then alleges that “The purported limitation of
`
`access control to stored data on the carrier is not supported by the disclosure of the
`
`227.2 Appln.” Id. at 18. Such an allegation, however, does not properly inform
`
`Patent Owner (or the PTAB) of which of the “code” limitations of claim 6
`
`Petitioner is alleging is not supported. If the Petition is alleging that “code to
`
`access the stored data when access is permitted” is not supported, then the Petition
`
`ignores that, in addition to other disclosures in the priority document, the
`
`paragraph in the Great Britain application crossing pages 3 and 4 recites:
`
`
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`- 18 -
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`
`
`The data storage means and/or the retrieval device can be
`
`provided with access control means to prevent unauthorised access to
`
`the downloaded data. Alternatively, this access control means can be
`
`used to stop or provide only limited access of the user to the
`
`downloaded data in accordance with the amount paid. Thus, for
`
`example, a complete set of data information relating to a particular
`
`topic, a particular music track, or a particular software package might
`
`be downloaded, although access to part of the data set might thereafter
`
`be controlled by payments made by a user at a later stage. Thus, a user
`
`could pay to enable an extra level on a game or to enable further
`
`tracks of an album.
`
`If the Petition had intended to allege that some other “code” limitation is
`
`unsupported, then what the Petitioner is alleging is unsupported is unclear
`
`and unpersuasive. Further, any allegation that “the ‘227.2 Appln. [does not]
`
`reveal evaluation of the stored usage information by leveraging use rules
`
`data to determine whether access is permitted to the stored data” (Petition at
`
`18) does not sufficiently explain how such an allegation relates to the actual
`
`claim language (e.g., “code to evaluate the use status data using the use rules
`
`data to determine whether access is permitted to the stored data”) of claim 6
`
`that is allegedly unsupported. Thus, the Petition fails to prove that claim 11
`
`
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`- 19 -
`
`
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`(from which claim 6 depends) is not supported by the Great Britain
`
`application. As a result, Gruse has not been shown to be prior art under 35
`
`U.S.C. § 102(a), and the combination of Gruse and Stefik is thus improper
`
`for that reason as well.
`
`
`
`X.
`
`CONCLUSION
`
`
`
`The Petition does not set forth a basis upon which to institute a CBM review,
`
`claim 11 is directed to statutory subject matter, the invalidity of claim 11 in light of
`
`Stefik and other references has already been raised in another proceeding
`
`(CBM2014-00106), Gruse has not been shown to be proper prior art to claim 11,
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`
`
`and Petitioner’s Petition should be denied.
`
`
`Dated: January 6, 2015
`
`
`
`
`
`
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`- 20 -
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`
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`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that this PATENT OWNER’S
`
`PRELIMINARY RESPONSE (including Patent Owner’s List of Exhibits) and
`
`Exhibits 2001-2002 and 2024 in CBM2014-00192 were served, by agreement of
`
`the parties, January 6, 2015 by emailing copies to counsel for the Petitioner as
`
`follows:
`
`W. Karl Renner (krenner@fr.com)
`Thomas Rozylowicz
`CBM39843-0005CP1@fr.com
`
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`Dated: January 6, 2015
`
`- 21 -