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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MOTOROLA MOBILITY LLC
`Petitioner
`
`v.
`
`ARNOUSE DIGITAL DEVICE CORPORATION
`Patent Owner
`
`
`
`
`
`Inter Partes Review No. IPR2013-00010
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`Patent No. 7,516,484
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`65566979V.8
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`I.
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`II.
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`TABLE OF CONTENTS
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`Background ...................................................................................................... 1
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`Statement of Material Facts ............................................................................. 1
`
`III.
`
`Statement of Relief Requested ........................................................................ 2
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`IV. Response to Patent Owner’s Arguments ......................................................... 2
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`A. Overview ............................................................................................... 2
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`B.
`
`C.
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`D.
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`E.
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`Kobayashi discloses the “security protocol” that the
`Patent Owner argues is novel under its improperly
`narrow construction. .............................................................................. 4
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`The Patent Owner’s proposed construction does not
`comply with the broadest reasonable construction rule. ....................... 6
`
`Both claim limitations can refer to the same component. ................... 10
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`Claims 1, 3, 7, 15, 16, 18, and 20 should be cancelled
`under 35 U.S.C. § 102 over Nelson. ................................................... 13
`
`V.
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`Conclusion ..................................................................................................... 15
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`
`
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`65566979V.8
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`i
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`I.
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`Background
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`On October 2, 2012, Motorola Mobility LLC (“Petitioner”) filed a Petition
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`for inter partes review of U.S. Patent No. 7,516,484 (the “’484 patent”). (Paper 2.)
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`The Patent Trial and Appeal Board (“PTAB”) instituted the inter partes review on
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`February 12, 2013, finding that the Petitioner had shown a reasonable likelihood
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`that claims 1, 3, 7, 15, 16, 18, and 20 of the ’484 patent are anticipated by U.S.
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`Patent No. 5,463,742 to Kobayashi (“Kobayashi,” Ex. 1003) and U.S. Patent No.
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`5,436,857 to Nelson (“Nelson,” Ex. 1004). (See Paper 21.)
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`The Scheduling Order provided, inter alia, that the Patent Owner could file a
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`Response to the Petition on or before May 13, 2013 and that Petitioner can reply
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`on or before August 12, 2013. (Paper 22.) On May 6, 2013, the Patent Owner filed
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`a Response to the Petition. (Paper 33.) Accordingly, Petitioner files this Reply.
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`II.
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`Statement of Material Facts
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`The Patent Owner argues that Petitioner did not submit a statement of
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`material facts and, thus, the Patent Owner could not properly submit a statement of
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`material facts in dispute. (Paper 33, p. 6.) There is no requirement that Petitioner
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`submit a statement of material facts in a petition for inter partes review. 37 C.F.R.
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`§ 42.22(c) states that “[e]ach petition or motion may include a statement of
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`material fact.” (emphasis added.) “A party is not required to submit a statement of
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`material fact in its briefing.” 77 Fed. Reg. 48756, 48763 (August 14, 2012)
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`65566979V.8
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`1
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`(emphasis added.) Thus, Petitioner did not include a statement of material facts in
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`its Petition.
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`III. Statement of Relief Requested
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`Pursuant to 35 U.S.C. § 311, Petitioner requests cancellation of claims 1, 3,
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`7, 15, 16, 18, and 20 as being anticipated under 35 U.S.C. § 102(b) by Kobayashi
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`and/or Nelson.1
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`IV. Response to Patent Owner’s Arguments
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`A. Overview
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`The Patent Owner first addresses the Board’s construction of “the portable
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`computer excludes means for a user to interact directly with the portable
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`computer,” stating that the Patent Owner objects “to any inference or conclusion
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`that this phrase limits the capabilities/configuration of the reader of claim 1.”
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`(Paper 33, p. 7, fn. 2.) (emphasis added.) Petitioner respectfully notes that this is a
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`claim limitation which, by definition, limits the claim. Moreover, the Board relied
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`on this claim limitation to exclude the Warren prior art reference. (Paper 21, pp.
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`1 Petitioner also asserted that claims 1, 3, 7, 15, 16, 18, and 20 should be canceled as anticipated
`under 35 U.S.C. § 102 by U.S. Patent No. 6,029,183 to Jenkins (“Jenkins”) and/or, under Patent
`Owner’s interpretation of the ’484 patent in parallel litigation and U.S. Patent No. 6,999,792 to
`Warren (“Warren”). Petitioner further asserted that claims 1, 3, 7, 15, 16, 18, and 20 should be
`canceled as obvious under 35 U.S.C. § 103 over the combination of Kobayashi, Nelson, or
`Warren in view of Jenkins. The PTAB did not reach the issue of whether Jenkins or the
`referenced combination invalidated the claims at issue because it found them cumulative of the
`Kobayashi and Nelson references. However, in the event that either Kobayashi or Nelson are not
`found to anticipate the claims at issue, Petitioner reserves the right to rely on each ground of
`rejection detailed in its petition for inter partes review. (Paper 2.)
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`2
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`10-11.) Thus, this limitation means that the ’484 Patent does not cover systems
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`involving a portable computer that includes means for a user to interact directly
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`with the portable computer.2
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`The Patent Owner then alleges that the phrase “connector for connecting” as
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`recited by independent claims 1 and 15 is not limited by the phrase “wherein the
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`readers are configured so that they will not operate with a computer other than a
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`portable computer of the system.” (Paper 33, pp. 14-17.) The Patent Owner argues
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`that “connector” is broadly described in the specification and at the same time
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`argues that the broadest reasonable construction of “connector for connecting”
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`requires an independent component, e.g., a USB dongle. (Paper 33, pp. 14, 16.)
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`Moreover, the Patent Owner asserts that “wherein the readers are configured
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`so that they will not operate with a computer other than a portable computer of the
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`system” requires that the “portable computers and readers are matched via security
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`protocols so as to eliminate the possibility of access to the portable computers by
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`just any reader.” (Paper 33, p. 22.) Such a construction is far narrower than the
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`broadest reasonable interpretation of this claim limitation. Even the Patent Owner
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`advocated for a broader construction in the litigation, where narrower construction
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`2 Petitioner notes that in the co-pending litigation, Arnouse Digital Devices Corp. v. Motorola
`Mobility, Inc., No. 5:11-cv-00155-cr (D. Vt.), the Patent Owner has alleged that this element is
`infringed by Motorola smartphones coupled to a Motorola Lapdock. These smartphones clearly
`include the same type of input/output means found in the device disclosed by Warren, and
`excluded by the plain language of the claims of the ’484 Patent. (See, e.g., Ex. 1009, pp. 22-23.)
`Patent Owner’s transparent attempt to preserve its meritless infringement claim against these
`devices should be rejected.
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`3
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`rules apply. (See “Joint Claim Construction and Prehearing Statement,” Ex. 1013,
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`p. 5) (proposing that the “wherein” clause be construed to mean “that the reader
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`has a non-universal design that limits the types of portable computers that may be
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`used with the reader.”) Based on this narrow construction, the Patent Owner argues
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`that neither Nelson nor Kobayashi anticipate the “wherein” clause.
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`The Patent Owner is incorrect for multiple reasons. First, Kobayashi
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`discloses the same type of “security protocol” that the Patent Owner argues is
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`novel under its erroneous construction. Second, the Patent Owner’s improper
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`construction does not comport with the broadest reasonable interpretation of the
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`language at issue. Third, contrary to the Patent Owner’s assertion, “a connector for
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`connecting” and “wherein the readers are configured so that they will not operate
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`with a computer other than a portable computer of the system” can refer to the
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`same component, as the Patent Owner acknowledged during prosecution of the
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`’484 Patent. For at least these reasons, Petitioner respectfully requests that the
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`PTAB reject the Patent Owner’s arguments and find claims 1, 3, 7, 15, 16, 18, and
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`20 of the ’484 patent invalid as anticipated by Kobayashi and/or Nelson.
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`B. Kobayashi discloses the “security protocol” that the Patent Owner
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`argues is novel under its improperly narrow construction.
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`As discussed in the Petition for inter partes review and in the decision
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`instituting inter partes review of the ’484 patent, Kobayashi discloses a docking
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`4
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`station that has a multi-connector that connects to a Personal Processor Module
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`(“PPM”) with a mating multi-connector. (See, e.g., Paper 2, pp. 8, 10; Paper 21,
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`pp. 12-13; Ex. 1003, col. 3, ll. 55-58.) At a minimum, this multi-connector meets
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`the “connector for connecting” limitation.
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`With regard to “wherein the readers are configured so that they will not
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`operate with a computer other than a portable computer of the system,” the Patent
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`Owner urges the Board to find that this element requires that the “portable
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`computers and readers are matched via security protocols so as to eliminate the
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`possibility of access to the portable computers by just any reader.” (Paper 33, p.
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`22.) As detailed further below, such a construction is error. However, even if the
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`Board follows the Patent Owner’s erroneous construction, Kobayashi still
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`anticipates this limitation. Koybashi states that the PPM “includes control software
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`that reads and recognizes a type code provided by each docking station and
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`configures the PPM accordingly.” (Ex. 1003, Abstract.) This “control software” –
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`which recognizes “a type code” – is the exact type of “security protocol” that the
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`Patent Owner alleges renders its claim novel. (See Paper 33, p. 22.)
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`Kobayashi further describes the control software, stating that “[w]hen the
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`PPM is connected to a docking station . . . an ID number of the docking station is
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`read as well as a configuration revision number for that docking station” and that
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`“these parameters define access to two of the basic subroutines which must be
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`5
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`setup under MS-DOS for every docking station to which connection is to be
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`made.” (Ex. 1003, col. 13, ll. 57-65.) Again, these parameters and subroutines
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`perform the function of a “security protocol” to prevent every reader from being
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`able to access every portable computer. Kobayashi’s Figure 30 makes clear that
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`each docking station includes its own ID#, which is stored in memory, and is
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`unique to each docking station.
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`
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`For the foregoing reasons, Petitioner respectfully submits that, even under
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`Patent Owner’s improperly narrow construction, Kobayashi discloses a docking
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`station (i.e., a reader) with a non-universal design that limits access to portable
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`computers by a reader, and discloses security protocols to eliminate the possibility
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`of access to the portable computers by just any reader. Thus, Kobayashi anticipates
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`the claims at issue regardless of how the claims are construed.
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`C. The Patent Owner’s proposed construction does not comply with the
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`broadest reasonable construction rule.
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`In inter partes review claim terms are interpreted under a “broadest
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`6
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`reasonable construction” standard. 37 C.F.R. § 42.100(b). The “broadest
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`reasonable construction” of the claims is determined “in light of the specification
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`as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of
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`Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In determining the broadest
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`reasonable interpretation of the claims, the interpretation must be consistent with
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`the interpretation that one of skill in the art would reach. In re Cortright, 165 F.3d
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`1353, 1359 (Fed. Cir. 1999). Therefore, in determining the broadest reasonable
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`construction of a claim, the focus should be what would be reasonable from the
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`perspective of one or ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d
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`1255, 1260 (Fed. Cir. 2010); see In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007).
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`The Patent Owner asserts that “wherein the readers are configured so that
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`they will not operate with a computer other than a portable computer of the
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`system” should be construed to mean that the “portable computers and readers are
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`matched via security protocols so as to eliminate the possibility of access to the
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`portable computers by just any reader.” (See Paper 33, pp. 19-22.) Such a
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`construction is far narrower than the broadest reasonable interpretation of this
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`limitation. After all, security protocols are just one possible way to configure a
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`reader to not operate with a computer other than a portable computer of the system.
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`Other ways to provide such a limitation could be the design of the interface
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`between the portable computer and the reader, the software configuration of the
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`7
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`devices, or a specific communication protocol between the devices.
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`Indeed, the Patent Owner advocated for a broader construction in the
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`litigation, even though narrower construction rules apply there. (See Ex. 1013, p.
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`5.) During the litigation, the Patent Owner asserted that the “wherein” clause at
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`issue should be construed to mean “that the reader has a non-universal design that
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`limits the types of portable computers that may be used with the reader.” (Ex.
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`1013, p. 5.) A non-universal design that limits the types of portable computers that
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`may be used with the reader is consistent with the claim language, and is certainly
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`broader than the “security protocols” meaning now being proffered by the Patent
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`Owner. Thus, the Patent Owner’s proposed construction in this proceeding – where
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`claims are interpreted under a broader standard than during litigation – cannot
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`possibly comply with the broadest reasonable interpretation.
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`In addition, this limitation encompasses a hardware configuration, such as a
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`port configured to receive a portable computer of the system but no other portable
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`computer. Such a port is shown in Figure 6 of the ’484 patent.
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`8
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`The “broadest reasonable construction” of the claims is determined “in light
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`of the specification as it would be interpreted by one of ordinary skill in the art.” In
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`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364. A person of ordinary skill in the
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`art reading the specification, and viewing Figure 6, would not find this limitation to
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`require “security protocols” as Patent Owner now suggests.
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`Moreover, it is improper to incorporate new, unrecited, limitations into the
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`claims, particularly under the broadest reasonable construction standard. When
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`claim language is broader than a particular embodiment in the specification, the
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`limitations of that particular embodiment should not be read into the language of
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`the claim. See Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed.
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`Cir. 2004) (“Though understanding the claim language may be aided by the
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`explanations contained in the written description, it is important not to import into
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`a claim limitations that are not a part of the claim. For example, a particular
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`embodiment appearing in the written description may not be read into a claim
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`when the claim language is broader than the embodiment.”); E-Pass Techs., Inc. v.
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`3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (“The problem is to interpret
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`claims ‘in view of the specification’ without unnecessarily importing limitations
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`from the specification into the claims.”).
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`Indeed, even in cases where a patent describes only a single embodiment,
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`courts have rejected the contention that the claims of the patent must be construed
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`9
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`as being limited to that embodiment. Altiris, Inc. v. Symantec Corp., 318 F.3d
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`1363, 1371 (Fed. Cir. 2003) (Although the specification discussed only a single
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`embodiment, the court held that it was improper to read a specific order of steps
`
`into method claims where, as a matter of logic or grammar, the language of the
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`method claims did not impose a specific order on the performance of the method
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`steps, and the specification did not directly or implicitly require a particular order).
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`Finally, the Patent Owner was afforded an opportunity in this proceeding to
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`amend the claims to require “security protocols” but chose not to do so. Instead,
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`the Patent Owner makes the tortured argument that “security protocols” are
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`required by the present claims.
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`For at least the foregoing reasons, such a construction is improper and fails
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`to comply with the broadest reasonable interpretation standard.
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`D. Both claim limitations can refer to the same component.
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`The Patent Owner further argues that both of the phrases “a connector for
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`connecting” and “wherein the readers are configured so that they will not operate
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`with a computer other than a portable computer of the system” cannot refer to the
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`same component. (Paper 33, pp. 14-17.) The Patent Owner’s argument appears to
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`be a form of claim differentiation, stating that all connectors are “specially
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`designed” so as to allow the connection of two devices to each other. (Paper 33, p.
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`16.) This argument both is plainly incorrect and is contrary to positions the Patent
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`10
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`
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`Owner took during prosecution of the application that led to the ’484 patent. (See
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`Ex. 1018, p. 6.)
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`First, contrary to the Patent Owner’s current assertion, multiple different
`
`devices may be able to connect to each other using a “universal” connector, such as
`
`a “Universal Serial Bus” (USB). It is well known that the same USB cable may be
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`used to connect a computer to a multitude of different devices such as keyboards,
`
`pointing devices, digital cameras, printers, portable media players, disk drives,
`
`smart phones, and network adapters. Thus, a device with USB port does not
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`necessarily preclude connection to another device that also has a USB port.
`
`The key here is that the claim recites that “the readers are configured so that
`
`they will not operate with a computer other than a portable computer of the
`
`system.” This narrows the claim because it requires something that restricts access
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`to other types of devices. This may be, as the Patent Owner suggests, some type of
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`security protocol. Alternatively, as shown in Figure 6 of the ’484 patent, it may be
`
`a specialized port that excludes devices that were not specially designed to connect
`
`to the port. The broadest reasonable interpretation and the plain meaning of the
`
`claim language do not exclude such embodiments. Rather, under the broadest
`
`reasonable construction, if the reader is configured such that it will not operate
`
`with a computer other than the claimed portable computer, the “wherein”
`
`limitation is met.
`
`11
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`
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`Second, the Patent Owner admitted that the same component may satisfy
`
`both claim elements at issue during prosecution. Specifically, in the Third Revised
`
`Accelerated Examination Support Document,
`
`the Patent Owner explicitly
`
`acknowledged that Jenkins discloses a connector for connecting to a portable
`
`computer. (See Ex. 1018, p. 6) (referencing Jenkins, element 4.) Element 4 of
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`Jenkins discloses a connector means 4 in the enclosure that can be configured in
`
`any design as long as it is compatible with the connector means 3 of the core unit.
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`(See Ex. 1005, col. 8, ll. 17-20.)
`
`
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`The Patent Owner went on to state that “Jenkins appears to disclose that the
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`readers are configured so that they will not operate with a computer other than a
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`portable computer of the system.” (Ex. 1018, p. 6) (citing Jenkins, col. 5, ll. 25-35.)
`
`The cited section of Jenkins discloses, inter alia, “[n]aturally, the enclosures need
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`to have special uniquely structured connector means so as to accept the core unit
`
`12
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`
`
`
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`with a mating connector.” (Ex. 1005, col. 5, ll. 29-31.) (emphasis added.) Thus, the
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`Patent Owner admitted that the same component in Jenkins, the connector means
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`4, discloses both of the claim elements at issue here. The Patent Owner cannot
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`ignore its previous statements and now argue that these two elements cannot be
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`disclosed by the same component.
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`Moreover, the Patent Owner cannot now argue that these two claim
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`elements, which it admitted were disclosed by Jenkins, somehow render the claim
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`novel. Jenkins makes clear that “[f]or security reasons, the more unique mating
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`connector means 3 and 4 are configured, the higher degree of security to the
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`contents of core unit 1 will be afforded.” (Ex. 1005, col. 8, ll. 20-23.) In other
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`words, as required by the Patent Owner’s construction, Jenkins discloses that
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`connector means 4 “has a non-universal design that limits access to portable
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`computers by a reader.” (Paper 33, pp. 19-20.) Thus, aside from the Patent
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`Owner’s own admission, it is clear that these limitations are anticipated by Jenkins.
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`E. Claims 1, 3, 7, 15, 16, 18, and 20 should be cancelled under 35 U.S.C. §
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`102 over Nelson.
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`The Patent Owner erroneously alleges that Nelson fails to disclose “wherein
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`the readers are configured so that they will not operate with a computer other than
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`a portable computer of the system” as recited in claims 1 and 15 of the ’484 patent.
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`(See, e.g., Paper 33, pp. 13, 22-23.) Nelson discloses this and all other elements of
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`13
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`the claims at issue.
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`As discussed in the petition for inter partes review and in the decision
`
`instituting inter partes review of the ’484 patent, Nelson discloses a base unit (i.e.,
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`a reader) that contains an interface to enable a module (i.e., a portable computer) to
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`be coupled to the base unit. (See, e.g., Paper 2, pp. 14-16; Paper 21, pp. 14-16; Ex.
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`1004, Figure 1 and associated disclosure.) In addition, Nelson describes an
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`embodiment in which “the module is packaged in a case which provides
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`mechanical modulatory which enables it to be installed and optionally locked into
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`a host device which may be, for example, a portable PC [base unit] . . .” (See, e.g.,
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`Paper 2, pp. 17-18; Ex. 1004, col. 2, ll. 30-34.) For the module (i.e., a portable
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`computer) to be locked into a portable PC base unit (i.e., a reader), the base unit
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`must have a design that is compatible with the module. (Id.)
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`Thus, both the portable computer and the portable base unit of Nelson have a
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`specialized design. That is, the portable base unit is “configured so that [it] will not
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`operate with a computer other than a portable computer of the system.” (Paper 33,
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`pp. 19-20.)
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`Nelson further describes several embodiments in which the portable module
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`is inserted into the base unit. (See, e.g., Paper 2, pp. 17-18; Ex. 1004 at col. 2, ll.
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`57-63.) For example, Nelson describes that “[a]s represented by the double-headed
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`arrow 44 in Fig. 2, the module 10 may readily be moved in and out of the housing
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`14
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`
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`of the portable PC [base unit] 36, with the interface 22 of the module 10 moving
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`into and out of the operative coupling with the interface 26 of the base unit 12
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`which is included in the portable PC [base unit] 36.” (Ex. 1004 at col. 2, 11. 57—63.)
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`The embodiments shown in Figures 2 and 3 of Nelson require a module that is
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`specifically designed for at least a specific type of base unit (and vice versa)
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`because the module must fit into the slot of the base unit. For example, a module of
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`the wrong size would not fit into the slots 42 and 52 shown in Figures 2 and 3
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`respectively. Thus, contrary to the Patent Owner’s assertion, Nelson discloses both
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`“a connector for connecting” and that “the readers are configured so that they will
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`not operate with a computer other than a portable computer of the system.”
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`V.
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`Conclusion
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`Petitioner respectfiilly requests that the PTAB find claims 1, 3, 7, 15, 16, 18,
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`and 20 of the ’484 patent invalid and unenforceable as being anticipated under 35
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`U.S.C. § 102(b) by Kobayashi and/or Nelson.
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`Respectfully submitted,
`
`By:
`Ko—Fan Chang
`Registration No. 50,829
`Lead Counsel for Petitioner
`
`Steven D. Moore
`Admitted Pro Hac Vice
`Back-Up Counsel for Petitioner
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`15
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