`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`RESEARCH IN MOTION CORP and RESEARCH IN MOTION LIMITED
`Petitioner,
`v.
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`Case IPR2013-00016 (JYC)
`Patent U.S. 6,441,828
`____________
`
`
`PATENT OWNER’S REPLY TO OPPOSITION TO MOTION TO
`AMEND
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`Attorney Docket No. 51020-057 USIPR
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`Under 37 C.F.R. § 42.23, Patent Owner MobileMedia Ideas LLC
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`(“MobileMedia”) respectfully submits this Reply and the Second
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`Declaration of Dr. Vijay K. Madisetti, dated August 19, 2013 (Ex. 2011).
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`Any fees due may be charged to Attorney Deposit Account 50-3081.
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`I.
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`INTRODUCTION
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`Petitioner devotes most of its Opposition to arguing that
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`MobileMedia’s proposed substitute claims 19-23 are either not compliant,
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`not supported, or indefinite, and devotes fewer than three pages to arguing
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`that proposed claims 19-23 are obvious based on the combinations of
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`multiple prior art references it has needed to string together to attempt to
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`show that all of the claimed elements were known, let alone obvious in
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`combination, to a person of ordinary skill at the time of the invention.
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`Petitioner improperly relies on hindsight bias (see, e.g., KSR Int’l v. Teleflex
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`Inc., 550 U.S. 398, 421 (2007)), and uses claims 19-23 as a roadmap, but has
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`still been unable to show that all claimed features of all claims were known,
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`even when combining references.
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`Claims 19-23 are one-for-one substitutes for each canceled claim.
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`MobileMedia conferred with the Board prior to filing the Motion.
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`Petitioner’s argument that those claims, which amended the original claims
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`1
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`to add structure that narrowed the claims to distinguish the proposed claims
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`Attorney Docket No. 51020-057 USIPR
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`from prior art, are somehow purportedly broader than the original claims
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`defies basic logic and has no merit. As shown below and in the Second
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`Madisetti Declaration, proposed claims 19-23 are narrower, supported and
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`definite. Petitioner’s arguments are simply a distraction and have no merit.
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`II. MOBILE MEDIA’S MOTION IS COMPLIANT.
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`The Motion and Madisetti Declaration (Ex. 2001) explained how the
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`proposed substitute claims are patentable (pages 3, 14) and provided
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`significant discussion of the plain meaning claim interpretation (pages 7-13),
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`which is proper. Proposed claim 19 amended original claim 6 to recite
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`specific and sufficient structure for the “means for determining” consistent
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`with the Board’s own construction in the Initial Decision (Paper No. 16),
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`resulting in that limitation no longer invoking 35 U.S.C. § 112, paragraph 6.
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`The specification makes clear that the position sensor “may be either a type
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`of which a moving element is moved in two directions or a type of which a
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`pendulum type element is moved in all directions.” (See, e.g., Ex. 2001 ¶ 57
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`(citing Ex. 1001, 6:26-36 (emphasis added).)
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` Proposed claim 19 narrowed the structure to require a sensor with a
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`moving element moved in all directions as opposed to one that could be
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`2
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`moved either in two directions or all directions (see, e.g., Ex. 2001 ¶ 57
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`Attorney Docket No. 51020-057 USIPR
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`(citing Ex. 1001, 6:26-36)) and added a recognition sensor that further
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`narrowed the claim from original claim 6. (Ex. 2011 ¶¶ 46-52, 66-67.)
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`Petitioner’s argument that substitute claims 20-23 improperly delete “many”
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`unidentified original claim features and do “not include or narrow each
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`feature of the challenged claim[s] being replaced” should be rejected.
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`(Opposition at 1 (citing Idle Free Sys. v. Bergstrom, IPR 2012-0027, Paper
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`26, June 11, 2013, at 5).)
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`Neither 35 U.S.C. § 316(d)(1)(B) nor USPTO rules give notice of, let
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`alone require, that a substitute claim cannot “eliminate any feature” in order
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`to be responsive to “an alleged ground of unpatentability. Unlike in Idle
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`Free Systems, MobileMedia has not proposed a “complete remodeling of its
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`claim structure according to a different strategy,” with multiple alternative
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`claims for each claim. (Id. at 5). MobileMedia’s Motion presents one-for-
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`one replacement claims that narrowed the independent claim and substituted
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`the dependent elements with different features that result in a narrower
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`claim. The Trial Practice Guide expressly contemplates new dependent
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`claims with previously unclaimed features. (See Patent Office Trial Practice
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`Guide at 48766-67 (e.g., claim 7).) Petitioner has failed to show how an
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`apparatus that infringes proposed claims 19-23 would not also have
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`3
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`infringed the original claims. Cf. Hickerson-Halberstadt v. Converse, Inc.,
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`Attorney Docket No. 51020-057 USIPR
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`183 F.3d 1369, 1374 (Fed. Cir. 1999).
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`III. PROPOSED NEW CLAIMS 19-23 ARE SUPPORTED AND NOT
`INDEFINITE.
`As explained in the Second Madisetti Declaration, Proposed claim 19
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`is supported and not indefinite. (Ex. 2011 at ¶¶ 35-45, 53-59.) Petitioner
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`resorts to misdirection and obfuscation. Dr. Madisetti did not “improperly
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`splice[] together the two independent embodiments described in the ‘828
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`patent,” the first described in relation to Figures 1-12, and the second
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`described in relation to Figures 13-17, starting at column 7, line 57.
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`This manufactured distinction is plainly incorrect. (Ex. 2011 ¶¶ 53-59.)
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`Proposed claims 20-23 are also supported and not indefinite. (Ex. 2011 ¶¶
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`60-65.)
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`IV. THE PROPOSED NEW CLAIMS 19-23 ARE PATENTABLY
`DISTINCT FROM AND NOT OBVIOUS BASED ON THE
`PRIOR ART RELIED UPON BY PETITIONER.
`As explained in greater detail in the Second Madisetti Declaration,
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`claims 19-23 are patentably distinct from the prior art on which the
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`Petitioner has relied. (Ex. 2011 at ¶¶ 68-227.) Claim 19 recites an
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`apparatus that determines a direction in which an image of the image signal
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`is to be displayed according to a posture in which the apparatus is placed
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`based on the recited structure, which includes the position sensor. Claim 19
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`4
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`also includes the recognition sensor. Claims 20, 21 and 22 add specific
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`Attorney Docket No. 51020-057 USIPR
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`features for using the recognition sensor, and claim 23 adds the automatic
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`slide show feature. As explained in the Second Madisetti Declaration,
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`Petitioner has not shown that every element of the combinations recited in
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`claims 19-23 was known, let alone obvious to a person of ordinary skill at
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`the time of the invention based on the Opposition and Petition Prior Art.
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`(Ex. 2011 at ¶¶ 68-227.)
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`V. RELIEF REQUESTED
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`For the foregoing reasons and the reasons stated Motion to Amend
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`and Exs. 2001 and 2011, MobileMedia respectfully submits that the
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`proposed new claims 19-23 are patentable and therefore should be allowed.
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`
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`PROSKAUER ROSE LLP
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`
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`Date: August 19, 2013
`PROSKAUER ROSE LLP
`One International Place
`Boston, Massachusetts 02110
`
`
`/Anthony C. Coles, Reg. No. 34,139/
`Anthony C. Coles, Reg. No. 34,139
`
`/John C. Stellabotte, Reg. No. 47,969/
`John C. Stellabotte, Reg. No. 47,969
`Attorneys for Patent Owner
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`5
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`EXHIBIT APPENDIX
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`Exhibit
`2001
`2002
`
`2003
`2004
`2005
`2006
`2007
`2008
`
`2009
`2010
`2011
`
`
`Description
`Declaration of Dr. Vijay K. Madisetti, dated May 20, 2013
`CV of Dr. Vijay K. Madisetti
`Proposed new claims marked up to show changes from the
`original ‘828 patent claims for which they are proposed as
`substitutes
`Clean version of proposed new claims
`Japanese Patent Application JP-10-254231
`Japanese Patent Application JP 11-016215
`Certified Translation of JP 10-254231
`Certified Translation of JP 11-016215
`Markman Order in MobileMedia Ideas, LLC v.
`Research In Motion, Ltd, Civil Action No. 3:11-CV-2353-N
`(N.D. Tex.), dated February 27, 2013
`U.S. Patent Application No. 08/384,012
`Second Declaration of Dr. Dr. Vijay K. Madisetti, dated
`August 19, 2013
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`Attorney Docket No. 51020-057 USIPR
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that THE PATENT OWNER’S REPLY
`TO OPPOSITION TO MOTION TO AMEND and Exhibit 2011 were
`served on August 19, 2013 in their entirety electronically on:
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`
`CPdocketMattson@oblon.com
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`/John C. Stellabotte, Reg. No. 47,969/
`John C. Stellabotte, Reg. No. 47,969
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