UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RAYMARINE, INC.
`Petitioner
`
`v.
`
`NAVICO HOLDING AS
`Patent Owner
`____________
`
`Case IPR2013-00355
`Patent 8,305,840
`____________
`
`Before SALLY C. MEDLEY, Administrative Patent Judge.
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`LEGAL02/34402043v1
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`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RAYMARINE, INC.
`Petitioner
`
`v.
`
`NAVICO HOLDING AS
`Patent Owner
`____________
`
`Case IPR2013-00355
`Patent 8,305,840
`____________
`
`Before SALLY C. MEDLEY, Administrative Patent Judge.
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`LEGAL02/34402043v1
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`
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`I.
`
`II.
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`TABLE OF CONTENTS
`INTRODUCTION……………………………………………..…………1
`
`RESPONSE TO PETITIONER’S SUMMARY OF REASONS FOR
`REQUESTED RELIEF….……………………………………………....1
`
`III. RESPONSE TO PETITIONER’S OVERVIEW OF THE ‘840 PATENT
`AND THE PROSECUTION HISTORY……..……………………….....3
`
`IV. CLAIM CONSTRUCTION………………………….…………………..5
`
`(A) Claim Interpretation: “A Single Linear Downscan Transducer
`Element”………………………………….………………………......6
`
`(B) Claim Interpretation: “A Fan-Shaped Sonar Beam”……………….10
`
`(C) Claim Interpretation: “Sequentially Insonify Different Fan-Shaped
`Regions of the Underwater Environment”………………………….11
`
`(D) Claim Interpretation: “Composite Of Images Of The Fan-Shaped
`Regions”…………………………………………………………….12
`
`V.
`
`ARGUMENT…………………………………………………………...13
`
`(A) U.S. Patent No. 5,791,552 is Not Prior Art………………………...14
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`i
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`
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`(B) Petitioner’s Challenges to Claims 16-19, 39-42, and 70-72 Do Not
`Have a Reasonable Likelihood of Success……………………….…16
`
`i. Petitioner’s Challenge That Claims 16 and 39 Are Anticipated by
`Hydrography Does Not Have a Reasonable Likelihood of Success...19
`
`a) Hydrography Fails To Disclose A Single Linear Down Scan
`Transducer Element……………………………………………20
`
`b) Hydrography Fails To Disclose Using Both A Linear Down
`Scan Transducer And A Circular Transducer………………22
`
`ii. Petitioner’s Challenge That Claims 16-19, 39-42, and 70-72 Are
`Unpatentable Over Hydrography in View of Adams Does Not Have a
`Reasonable Likelihood of Success…………………….…………….24
`
`a) Petitioner’s Challenge That Claims 16 and 39 Are
`Unpatentable Over Hydrography in View of Adams Does
`Not Have a Reasonable Likelihood of Success……………24
`
`1) Adams Fails To Teach Either A Linear Transducer
`Element Or A Fan Shaped Beam…………………..24
`
`2) Adams Fails To Teach Use Of Separate Linear And
`Circular Transducer Elements, Or Downward Facing
`Elements……………………………………………27
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`ii
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`
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`b) Petitioner’s Challenge That Claims 17 and 42 Are
`Unpatentable Over Hydrography in View of Adams Does
`Not Have a Reasonable Likelihood of Success……………30
`
`1) Hydrography And Adams Fail To Teach Placing
`Linear And Circular Transducer Elements In The
`Same Housing………………………………………30
`
`c) Petitioner’s Challenge That Claims 18 and 40 Are
`Unpatentable Over Hydrography in View of Adams Does
`Not Have a Reasonable Likelihood of Success……………32
`
`1) Hydrography And Adams Fail To Teach Projecting
`Fan-Shaped And Conical Sonar Beams That
`Overlap…………………………………………….32
`
`d) Petitioner’s Challenge That Claims 19 and 41 Are
`Unpatentable Over Hydrography in View of Adams Does
`Not Have a Reasonable Likelihood of Success…………..34
`
`1) Hydrography And Adams Fail To Teach Linear And
`Circular Transducers Providing Generally
`Simultaneous Data………………………………..34
`
`e) Petitioner’s Challenge That Claim 70 Is Unpatentable Over
`Hydrography in View of Adams Does Not Have a
`Reasonable Likelihood of Success……….………………36
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`
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`1) Hydrography And Adams Fail To Teach Displaying
`The Intensity Of A Return Echo Received From The
`Conical Sonar Beam………………………………36
`
`f) Petitioner’s Challenge That Claim 71 Is Unpatentable Over
`Hydrography in View of Adams Does Not Have a
`Reasonable Likelihood of Success……………………….38
`
`1) Hydrography And Adams Fail To Teach Placing The
`Linear Down Scan Transducer And The Second
`Transducer In The Same Housing…………………38
`
`g) Petitioner’s Challenge That Claim 72 Is Unpatentable Over
`Hydrography in View of Adams Does Not Have a
`Reasonable Likelihood of Success……………………….40
`
`1) Hydrography And Adams Fail To Teach The Linear
`Downscan Transducer And Second Transducer
`Operating At Different Frequencies………………40
`
`iii. Petitioner’s Challenge That Claims 16-17, 39, 42, and 70-71 Are
`Unpatentable Over Hydrography in View of Sato Does Not Have a
`Reasonable Likelihood of Success…………………………………41
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`
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`a) Petitioner’s Challenge That Claims 16 and 39 Are
`Unpatentable Over Hydrography in View of Sato Does Not
`Have a Reasonable Likelihood of Success………………..42
`
`1) Hydrography And Sato Fail To Teach A Linear And
`Circular Transducer……………………………….42
`
`b) Petitioner’s Challenge That Claims 17 and 42 Are
`Unpatentable Over Hydrography in View of Sato Does Not
`Have a Reasonable Likelihood of Success……………….47
`
`1) Hydrography And Sato Fail To Teach Linear And
`Downscan Transducer Elements In The Same
`Housing…………………………………………….47
`
`c) Petitioner’s Challenge That Claim 70 Is Unpatentable Over
`Hydrography in View of Sato Does Not Have a Reasonable
`Likelihood of Success……………………………………..49
`
`1) Hydrography And Sato Fail To Teach Displaying The
`Intensity Of The Return From The Conical Sonar
`Beam……………………………………………….49
`
`d) Petitioner’s Challenge That Claim 71 Is Unpatentable Over
`Hydrography in View of Sato Does Not Have a Reasonable
`Likelihood of Success……………………………………..51
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`1) Hydrography And Sato Fail To Teach The Linear
`Transducer And Second Transducer Being In The
`Same Housing………………………………………51
`
`VI.
`
`PATENT OWNER LEAVES PETITIONER TO ITS
`BURDEN……………………………………………………………….52
`
`VII. CONCLUSION…………………………………………………………53
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`
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`TABLE OF AUTHORITIES
`
`CASES:
`Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345 (1961)…….3
`W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)…..4
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983).........................4
`Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518, 521 (1972)……….……4
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
`2002).......................................................................................................5, 10, 12, 13
`Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)………22
`Ex Parte Cucerzan, Appeal 2009008190, Appl. No. 11/094,078, Tech. Center 2100
`(May 2, 2011)……………………………………………………………………..22
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)…………….………………..45
`STATUES:
`37 C.F.R. §1.56.…………………………………………………………………….2
`37 C.F.R. §1.131…………………………………………………………………..12
`37 C.F.R. §42.107(a)……………………………………………………….......1, 35
`37 C.F.R. §42.108(c)………..……………………………………...…..1, 13, 14, 53
`37 C.F.R. §42.100(b)………………………………………………….……………5
`35 U.S.C. §102(b), (e)…………..………………………………….……..14, 18, 23
`35 U.S.C. §103(a)…………..…...………...18, 29, 31, 33, 35, 38, 39, 46, 48, 50, 52
`OTHER AUTHORITIES:
`MPEP §715.07(II)……………………………………………………….………..15
`MPEP §2141.02(I) and (II)……………………………………………………...3, 4
`Leahy-Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284 (2011)…..….....4
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012)……...5, 15
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`
`
`LIST OF EXHIBITS
`
`NAV – 2001
`
`DECLARATION BY ALAN PROCTOR TO ESTABLISH
`CONCEPTION AND REDUCTION TO PRACTICE PRIOR
`TO AUGUST 28, 2008
`
`NAV – 2002
`
`“ITC Application Equations for Underwater Sound
`Transducers”; Published by International Transducer
`Corporation, 1995, Rev. 8/00; 3 pages
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`
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`Petitioner Raymarine, Inc. filed a Petition for Inter Partes Review (“the
`
`Petition”) of U.S. Patent No. 8,305,840 (“the ‘840 patent”) on June 13, 2013.
`
`Pursuant to 37 C.F.R. §42.107(a), Patent Owner, Navico Holding AS, submits the
`
`following Preliminary Response, setting forth reasons why an inter partes review
`
`should not be instituted.
`
`I.
`
`INTRODUCTION
`
`As presented in greater detail herein, Petitioner has failed to meet its burden
`
`under 37 C.F.R. §42.108(c) of establishing a reasonable likelihood of success that
`
`any of Claims 1-2, 5, 7, 16-21, 23, 25, 30, 32, 38-42, 45, 64, and 70-73 would be
`
`unpatentable based on its challenges. Accordingly, Patent Owner requests that the
`
`Board deny institution of an inter partes review.
`
`II.
`
`RESPONSE TO PETITIONER’S SUMMARY OF REASONS FOR
`
`REQUESTED RELIEF
`
`The Summary of Reasons section of the Petition is merely remarks that are
`
`unsupported by any evidence or reasoning. First, the Petitioner mischaracterizes
`
`the disclosure of the ‘840 patent and alleges that “[a]ll of these features were
`
`known in the art prior to 2009, when the application that issued as the ‘840 patent
`
`was filed.” Second, Petitioner alleges that “[s]ingle transducer elements in all
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`shapes and sizes and mounted to watercraft in a wide variety of orientations (of
`
`course including the default ‘vertically down’ orientation) were known to persons
`
`of ordinary skill in the art before 2009.” See Pages 2-3 of the Petition. These
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`allegations should be given no weight by the Board, inasmuch as Petitioner has not
`
`cited any prior art teachings in support. Contrary to Petitioner’s allegations,
`
`embodiments of the claimed invention, including but not limited to a sonar system
`
`with a linear transducer element mounted to a watercraft to project sonar pulses in
`
`a direction substantially perpendicular to surface of the water, were not known to
`
`persons of ordinary skill in the art before the invention date of the ‘840 patent, as
`
`confirmed by the prior art evaluated by the Examiner. Indeed, the insinuation by
`
`Petitioner that it was known to orient all known types of transducers in any and all
`
`possible directions is merely wishful thinking. Not only is it unsupported, it is
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`untrue, and should be given no weight.
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`Finally, there is no relevance or merit to Petitioner’s complaint that the
`
`Examiner was “flooded” with references during prosecution of the ‘840 patent.
`
`Every reference cited by the Patent Owner during prosecution was cited to fully
`
`comply with the applicant’s duty of candor under 37 C.F.R. §1.56, which includes
`
`no requirement of “citations or indications of relevance.” Moreover, the Request
`
`for Continued Examination filed March 5, 2012 (RAY-1002, pgs. 268-269) gave
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`the Examiner ample time to fully consider each cited reference. The file history is
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`clear: the Examiner considered each reference during prosecution and properly
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`rejected them as immaterial. To ensure full consideration, Applicant’s
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`representatives even held an interview with the Examiner to discuss the prior art
`
`submitted. See Applicant-Initiated Interview Summary of November 16, 2011
`
`(RAY 1001, p. 401) (the Examiner noting that “Applicant’s representatives
`
`discussed additional prior art from recently filed IDS.”).
`
`III. RESPONSE TO PETITIONER’S OVERVIEW OF THE ‘840 PATENT
`
`AND THE PROSECUTION HISTORY
`
`Petitioner misleadingly characterizes remarks made in Applicant’s
`
`Amendment of Nov. 30, 2011, to create the illusion that application’s “only alleged
`
`point of novelty was pointing a rectangular transducer downward from a
`
`watercraft.” See Page 6 of the Petition. While it is true that the prior art references
`
`cited during prosecution failed to disclose a linear downscan transducer as claimed,
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`Petitioner is improperly suggesting that this is the “gist or heart” of the claimed
`
`invention, despite the fact that the Supreme Court and the Court of Appeals for the
`
`Federal Circuit long ago established that “there is no legally recognizable or
`
`protected essential element, gist or heart of the invention in a combination patent.”
`
`See Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345 (1961);
`
`see also MPEP §2141.02(II) (stating that “[d]istilling an invention down to the
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`
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`‘gist’ or ‘thrust’ of an invention disregards the requirement of analyzing the subject
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`matter ‘as a whole’”) (quoting W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
`
`1540 (Fed. Cir. 1983)). Patents are granted not to individual points of novelty, but
`
`to claimed inventions, which are combinations of features interrelated in a
`
`particular way. It is well established that the claims, taken in their entirety, define
`
`the invention. See, e.g., MPEP §2141.02(I) (stating that “[i]n determining the
`
`differences between the prior art and the claims, the question under 35 U.S.C. 103
`
`is not whether the differences themselves would have been obvious, but whether
`
`the claimed invention as a whole would have been obvious”) (citing, among others,
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); see also
`
`Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 521 (1972) (stating that
`
`“[t]he patents were warranted not by the novelty of their elements but by the
`
`novelty of the combination they represented”). Thus, each and every element of
`
`each claim of the ‘840 patent must be given its own patentable weight.
`
`Finally, it is unclear precisely what point Petitioner is trying to make when it
`
`states that Claim 73 “does not expressly recite the ‘single’ and ‘downscan’
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`limitations, which is inconsistent with the prosecution history and the admitted
`
`prior art.” See Page 8 of the Petition. Claim 73 was duly considered and allowed
`
`over all prior art of record.
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`IV. CLAIM CONSTRUCTION
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`Consistent with the statute and legislative history of the Leahy-Smith
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`America Invents Act, Pub. L. 112-29, 125 Stat. 284,329 (2011) (“AIA”), when
`
`considering whether to institute an inter partes review, the Board has indicated that
`
`it will construe claims by applying the broadest reasonable interpretation in light of
`
`the specification. 37 C.F.R. §42.100(b); see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). There is a “heavy
`
`presumption” that a claim term carries its ordinary and customary meaning. CCS
`
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However,
`
`a “claim term will not receive its ordinary meaning if the patentee acted as his own
`
`lexicographer and clearly set forth a definition of the disputed claim term in either
`
`the specification or prosecution history.” Id. In the Petition, Petitioner attempts to
`
`construe the following four claim terms:
`
`(i) “a single linear downscan transducer”;
`
`(ii) “fan-shaped sonar beam”;
`
`(iii) “sequentially insonify different fan-shaped regions of the
`
`underwater environment”; and
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`(iv) “composite images of the fan-shaped regions.”
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`(A) Claim Interpretation: “A Single Linear Downscan Transducer
`
`Element”
`
`In presenting its proposed interpretation of the claim term “a single linear
`
`downscan transducer,” Petitioner fails to accept, or even assess, the plain and
`
`ordinary meaning of the phrase. Instead, it picks and chooses, pointing to some
`
`portions of the specification and prosecution history of the ‘840 patent but ignoring
`
`others. In particular, Petitioner points to the Amendment After Final filed by the
`
`Applicant on February 21, 2012 and requests that the claim term be construed as:
`
`“a downwardly directed transducer comprising either a single monolithic
`
`rectangular shaped transducer element or a plurality of transducer elements
`
`arranged end-to-end and electrically connected to act as a single rectangular
`
`element.”
`
`Patent Owner agrees that the specification and prosecution history are
`
`important for construing a claim term, and here the intrinsic evidence confirms that
`
`the plain and ordinary meaning is clear to one skilled in the art. Petitioner’s
`
`interpretation, however, is not accurate. The claim term “a single linear downscan
`
`transducer element” contains several well understood parts, and each is addressed
`
`below (e.g., the italicized term in each of the following sections).
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`
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`i.
`
`“Single Linear Downscan Transducer Element”
`
`The specification provides an example of a “linear transducer element” as
`
`being “substantially rectangular in shape.” The “rectangular arrangement provides
`
`for an approximation of a linear array having beamwidth characteristics that are a
`
`function of the length and width of the rectangular face of the transducer elements
`
`and the frequency of operation.” See Col. 9, line 36 – Col. 10, line 10 of the ‘840
`
`patent. The term “linear transducer element” is further described as part of the
`
`express language of independent Claims 1 and 23. Claim 1 recites that the “linear
`
`downscan transducer element” must have a “substantially rectangular shape
`
`configured to produce a fan-shaped beam having a relatively narrow beamwidth in
`
`a direction parallel to a longitudinal length of the linear downscan transducer
`
`element and a relatively wide beamwidth in a direction perpendicular to the
`
`longitudinal length of the transducer element.” This accords with description of a
`
`linear transducer element throughout the specification, such as one example
`
`embodiment described in Col. 9, line 51 – Col. 10, line 10 of the ‘840 patent.
`
`Further evidence of a linear transducer element that is substantially rectangular
`
`shaped and configured to produce a fan-shaped beam can be seen in FIGs. 6, 7A,
`
`and 7B of the ‘840 patent (for example, see element 60 and the illustrated beam).
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`ii.
`
`“Single Linear Downscan Transducer Element”
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`The specification provides an example of a “downscan element” as being
`
`“positioned to scan substantially below the vessel.” See Col. 11, lines 1 – 2 of the
`
`‘840 patent. The term “downscan” is further described as part of the express
`
`language of independent Claims 1 and 23. Claim 1 recites that the “linear
`
`downscan transducer element is positioned within the housing to project fan-
`
`shaped sonar beams in a direction substantially perpendicular to a plane
`
`corresponding to the surface of the body of water.” This accords with the
`
`descriptions and illustrations of a linear downscan transducer element throughout
`
`the specification, such as one example embodiment described in Col. 11, lines 25 –
`
`48 of the ‘840 patent. Further evidence of a linear downscan transducer element
`
`can be seen in FIGs. 6, 7A, 7B, 8B, 17A, and 17B of the ‘840 patent.
`
`iii.
`
`“Single Linear Downscan Transducer Element”
`
`The prosecution history of the ‘840 patent provides guidance to the meaning
`
`of the term “single” in reference to a linear transducer element. In the Amendment
`
`After Final filed by the Applicant on February 21, 2012 (RAY-1002), the
`
`Applicant stated that the claims had been amended to “recite that there is a single
`
`such linear downscan transducer element (to distinguish over an array-type
`
`transducer having multiple elements arranged in some type of array for use in
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`phased-array beam steering).” (Emphasis added.) The Applicant continued, stating
`
`that “[i]t will be understood, of course, that the recitation of a ‘single linear
`
`downscan transducer element’ does not require the single element to be a
`
`monolithic structure formed of a single crystal of material. It is well known in the
`
`transducer field that a plurality of such crystals can be arranged (e.g., end-to-end)
`
`and can be electrically connected to circuitry such that the plurality of crystals act
`
`together as if they were a single crystal or element. Claims 57 and 76 encompass
`
`any ‘single downscan transducer element’ (whether monolithic or not) as distinct
`
`from a multi-element phased array-type transducer.” (RAY-1002, p. 297.)
`
`(Claims 57 and 76 of the patent application correspond with Claims 1 and 23 of the
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`‘840 patent.) Based on the above, the meaning of a “single linear downscan
`
`transducer element” includes “a monolithic structure formed of a single crystal of
`
`material” or “a plurality of such crystals . . . arranged (e.g., end-to-end) and . . .
`
`electrically connected to circuitry such that the plurality of crystals act together as
`
`if they were a single crystal or element.” (Emphasis added.) This term does not
`
`cover a “multi-element phased array-type transducer[s].” (RAY-1002, p. 297.)
`
`Indeed, in the Amendment After Final, the Applicant used the term “single linear
`
`downscan transducer element” to distinguish the claimed invention from the
`
`“multi-element array” disclosed in U.S. Patent No. 5,805,528 to Hamada, which
`
`had been cited by the Examiner. (RAY-1002, p. 299.) The specification describes
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`a “single linear transducer” at Col. 11, lines 30-31, and Col. 17, lines 5, further
`
`referring to FIGs. 8B and 17A-17C. This use of the term “single” in the
`
`specification is consistent with the prosecution history.
`
`Thus, using the broadest reasonable interpretation in light of the claims,
`
`specification, and prosecution history, the claim term “single linear downscan
`
`transducer element” means: a substantially rectangular element, or a plurality of
`
`connected substantially rectangular elements operating as a single substantially
`
`rectangular element, pointed downwardly. This interpretation excludes a multi-
`
`element array.
`
`(B) Claim Interpretation: “A Fan-Shaped Sonar Beam”
`
`Petitioner attempts to interpret the claim term “a fan-shaped sonar beam” to
`
`be “a sonar beam with a narrow beamwidth in one direction and a wide beamwidth
`
`in the other perpendicular direction.” The claim term “a fan-shaped sonar beam”
`
`carries an ordinary and customary meaning and, thus, does not need additional
`
`interpretation. See, e.g., CCS Fitness, Inc., 288 F.3d at 1366. Petitioner
`
`conveniently ignores the express language of the claims that describe the claim
`
`term “fan-shaped beam.” Inexplicably, Petitioner’s interpretation conspicuously
`
`lacks the modifier “relatively” from the description of the narrow beamwidth and
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`wide beamwidth. The claim term “a fan-shaped sonar beam” is clearly described
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`10
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`in independent Claim 1 as having “a relatively narrow beamwidth in a direction
`
`parallel to a longitudinal length of the linear downscan transducer element and a
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`relatively wide beamwidth in a direction perpendicular to the longitudinal length of
`
`the transducer element.” (Independent Claim 23 includes similar recitations). It is
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`also clearly described in independent Claim 73 as having “a longitudinal
`
`beamwidth in a direction parallel to a longitudinal length of the linear transducer
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`element that is significantly less than a transverse beamwidth of the sonar beam in
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`a direction perpendicular to the longitudinal length of the transducer element.”
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`Thus, no further interpretation of “a fan-shaped sonar beam” is necessary.
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`(C) Claim Interpretation: “Sequentially Insonify Different Fan-Shaped
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`Regions of the Underwater Environment”
`
`Petitioner attempts to interpret the claim term “sequentially insonify
`
`different fan-shaped regions of the underwater environment” to mean “emit sonar
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`pulses into an underwater environment and detect sonar returns from the
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`underwater environment as the transducer is moved across the water over time.”
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`In doing so, Petitioner has not only failed to address significant portions of the
`
`relevant claim language, but has contorted the portion it does address. Indeed, the
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`full claim term is as follows: “said sonar beams being repeatedly emitted so as to
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`sequentially insonify different fan-shaped regions of the underwater environment
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`
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`as the watercraft travels.” This full phrase carries an ordinary and customary
`
`meaning to one of ordinary skill in the art and, thus, does not need additional
`
`interpretation. See, e.g., CCS Fitness, Inc., 288 F.3d at 1366. Petitioner’s
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`arguments again conspicuously fail to account for important and express claim
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`language (italicized above) and attempt to interpret only a portion of all of the
`
`pertinent claim language. Indeed, when the entire claim term of “said sonar beams
`
`being repeatedly emitted so as to sequentially insonify different fan-shaped regions
`
`of the underwater environment as the watercraft travels” is read, no further
`
`interpretation is necessary.
`
`(D) Claim Interpretation: “Composite Of Images Of The Fan-Shaped
`
`Regions”
`
`Petitioner attempts to interpret the claim term “composite of images of
`
`the fan-shaped regions” to be “sonar reflection data from multiple fan-shaped
`
`regions represented on a common display.” Petitioner has again taken the claim
`
`term out of context and fails to address all of the pertinent claim language. The
`
`full claim term is as follows: “to create an image of the underwater environment as
`
`a composite of images of the fan-shaped regions arranged in a progressive order
`
`corresponding to the travel of the watercraft.” This full claim term carries an
`
`ordinary and customary meaning to one of ordinary skill in the art and, thus, does
`
`LEGAL02/34402043v1
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`12
`
`
`
`not need additional interpretation. See, e.g., CCS Fitness, Inc., 288 F.3d at 1366.
`
`Petitioner once again conspicuously omits important claim language (italicized
`
`above), injects new elements (“sonar reflection data” and “common display”) in its
`
`claim interpretation, and attempts to interpret only a portion of the pertinent claim
`
`language. Indeed, when the entire claim term “to create an image of the
`
`underwater environment as a composite of images of the fan-shaped regions
`
`arranged in a progressive order corresponding to the travel of the watercraft” is
`
`read, no further interpretation is necessary.
`
`V.
`
`ARGUMENT
`
`Petitioner presents six different challenges to various ones of Claims 1-2, 5,
`
`7, 16-21, 23, 25, 30, 32, 38-42, 45, 64, and 70-73. Pursuant to 37 C.F.R.
`
`§42.108(c), the Petitioner must demonstrate that there is a reasonable likelihood
`
`that the claims challenged in the petition are each unpatentable in order to warrant
`
`institution of an inter partes review for that claim. Petitioner has failed to establish
`
`this burden with respect to each of the claims challenged in the Petition.
`
`For at least the reasons set forth below, Patent Owner respectfully requests
`
`that institution of inter partes review be denied for the following challenges and
`
`claims: Challenge #2: Claims 1-2, 23, 30, and 73 (see Section A below); Challenge
`
`#1: Claims 16 and 39 (see Section B below); Challenge #4: Claims 16-19, 39-42,
`
`LEGAL02/34402043v1
`
`13
`
`
`
`and 70-72 (see Section B below); and Challenge #5: Claims 16-17, 39, 42, and 70-
`
`71 (see Section B below). With respect to the remaining challenges, Patent Owner
`
`leaves Petitioner to its burden under 37 C.F.R. §42.108(c), and submits that the
`
`Petitioner has failed to establish this burden with respect to each of those
`
`challenges and claims.
`
`(A) U.S. Patent No. 5,791,552 to Boucher et al. is Not Prior Art
`
`Petitioner, under Challenge #2, alleges that Claims 1-2, 23, 30, and 73 of the
`
`‘840 patent are unpatentable for being obvious over Hydrography in view of U.S.
`
`Patent No. 5,791,552 to Boucher et al. (“Boucher ‘552”), with a filing date of
`
`August 28, 2008 (the effective date). The Petitioner alleges that Boucher ‘552 is
`
`prior art to the ‘840 patent under 35 U.S.C. §102(e).
`
`Boucher ‘552 is not prior art because the invention of Claims 1-2, 23, 30,
`
`and 73 was reduced to practice in the United States prior to the effective date of
`
`Boucher ‘552, as established by the Declaration of Alan Proctor (hereinafter “the
`
`Proctor Declaration”) (See NAV-2001) (which is similar in form to a Declaration
`
`that would be submitted under 37 C.F.R. §1.131 during prosecution). Alan
`
`Proctor, an employee of Navico Inc. (which is wholly owned by Patent Owner),
`
`understood that Patent Owner intended to submit the Proctor Declaration in this
`
`proceeding. See Paragraph 1 of the Proctor Declaration. Patent Owner requests
`
`LEGAL02/34402043v1
`
`14
`
`
`
`entry of the Proctor Declaration under 37 C.F.R. §42.107, denoted as Exhibit
`
`NAV-2001, as evidence that Boucher ‘552 is not in fact prior art. This request
`
`accords with point (2) for potential Patent Owner preliminary responses as
`
`established in the Official Patent Trial Practice Guide, which states that a Patent
`
`Owner preliminary response may include arguments and evidence that “[t]he
`
`references asserted to establish that the claims are unpatentable are not in fact prior
`
`art.” See Federal Register Vol. 77, No. 157, pg. 48764 (August 14, 2012).
`
`The Proctor Declaration includes a showing of facts that, in character and
`
`weight, establish reduction to practice of the claimed invention by inventor Brian
`
`T. Maguire prior to the August 28, 2008, which is the effective date of Boucher
`
`‘552. Exhibits A-D to the Proctor Declaration provide contemporary documentary
`
`evidence of such reduction to practice. The Proctor Declaration includes a brief
`
`description of pertinent information from Exhibits A-D and tables correlating each
`
`claimed feature of each of Claims 1-2, 23, 30, and 73 with at least one
`
`corresponding Exhibit. In accordance with MPEP §715.07(II), while the actual
`
`dates of Exhibits A-D have been redacted, Alan Proctor has declared that such
`
`Exhibits contain dates that are prior to August 28, 2008. See Paragraphs 12-15 of
`
`the Proctor Declaration.
`
`Based on the evidence in the Proctor Declaration, Boucher ‘552 is not prior
`
`art to, at least, Claims 1-2, 23, 30, and 73. Thus, there is not a reasonable
`
`LEGAL02/34402043v1
`
`15
`
`
`
`likelihood that the Petitioner would prevail in showing that Claims 1-2, 23, 30, and
`
`73 of the ‘840 patent are unpatentable as obvious over Hydrography in view of
`
`Boucher ‘552 (Challenge #2). Patent Owner requests that institution of inter
`
`partes review based on Challenge #2 be denied for at least the above stated
`
`reasons.
`
`(B)Petitioner’s Challenges to Claims 16-19, 39-42, and 70-72 Do Not Have
`
`a Reasonable Likelihood of Success
`
`Patent Owner intends to respond fully to all of Petitioner’s challenges in the
`
`event that the Board institutes trial in this inter partes review proceeding. For
`
`purposes of the present Preliminary Response, however, Patent Owner focuses on
`
`only those claims that relate to embodiments of sonar systems that include both a
`
`linear downscan transducer element and a circular downscan transducer element
`
`(Claims 16-19, 39-42, and 70-72). Several of these claims further require that the
`
`linear downscan element and the circular downscan element are
`
`(i) mounted in the same housing (See, e.g., FIGs. 16A-16C – Claims 17, 42,
`
`and 71);
`
`(ii) positioned to project fan-shaped (from the linear downscan transducer
`
`element) and conical (from the circular downscan transducer element) sonar beams
`
`that at least partially overlap (See, e.g., FIGs. 15A-15B – Claims 18 and 40);
`
`LEGAL02/34402043v1
`
`16
`
`
`
`(iii) operated such that the sonar signal returns provide generally
`
`simultaneous data (See, e.g., FIGs. 14, 15A, and 15B – Claims 19 and 41);
`
`(iv) operated in conjunction with a display, wherein the display indicates an
`
`intensity of a return echo received from the conical sonar beam (See, e.g., FIGs.
`
`12B, 12C, and 12D and Col. 13, lines 53-64 – Claim 70); and
`
`(v) operated at different respective frequencies (See, e.g., Col. 15, lines 38-
`
`46 – Claim 72).
`
`None of the cited references, whether taken alone or in combination, teach
`
`or suggest using both a linear downscan transducer element and a circular
`
`downscan transducer element as part of the same sonar system and both pointing
`
`down (e.g., in a direction substantially perpendicular to the plane corresponding to
`
`the surface of the water). Further, none of the cited references, whether taken
`
`alone or in combination, teach or suggest a sonar system with a linear downscan
`
`element and a circular downscan element (i) mounted in the same housing; (ii)
`
`positioned to project fan-shaped and conical sonar beams that at least partially
`
`overlap; (iii) operated such that the sonar signal returns of the two elements
`
`provide generally simultaneous data; (iv) operated in conjunction with a display,
`
`wherein the display indicates an intensity of a return echo received from the
`
`conical sonar beam; or (v) operated at different respective frequencies.
`
`LEGAL02/34402043v1
`
`17
`
`
`
`The claimed invention is novel, non-obvious and provides significant
`
`advantages over prior sonar systems. For example, a linear downscan transducer
`
`element provides a more realistic view of the underwater environment (similar to a
`
`picture), whereas a circular downscan transducer element provides a more
`
`distinctive view of fish in the underwater environment (and may be preferred for
`
`fish finding). Example embodiments of the claimed invention provide for
`
`customizable display options for a user (e.g., display of an image created using
`
`solely circular downscan sonar data, a display of an image created using solely
`
`linear downscan sonar data, a split screen display of both individual displays
`
`simultaneously, etc.). See, e.g., Col. 15, line 50 – Col. 16, line 7 of the ‘840 patent.
`
`For at least the foregoing reasons, which are elaborated upon below, there is
`
`not a reasonable
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