Paper No.
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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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`___________________
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`RAYMARINE, INC, Petitioner
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`v.
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`Patent of NAVICO HOLDING AS
`Patent Owner.
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`Patent No. 8,305,840
`Issue Date: November 6, 2012
`Title: DOWNSCAN IMAGING SONAR
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`
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`Motion For Rehearing Of Decision To Institute By Raymarine, Inc.
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`Inter Partes Review No. IPR2013-00355
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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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`___________________
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`RAYMARINE, INC, Petitioner
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`v.
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`Patent of NAVICO HOLDING AS
`Patent Owner.
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`Patent No. 8,305,840
`Issue Date: November 6, 2012
`Title: DOWNSCAN IMAGING SONAR
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`
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`Motion For Rehearing Of Decision To Institute By Raymarine, Inc.
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`Inter Partes Review No. IPR2013-00355
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` INTRODUCTION
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`The Board’s recent Decision to Institute declined to initiate inter partes
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`review of U.S. Patent No. 8,305,840 on three of the six grounds presented in
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`Raymarine’s Petition, including two grounds that were rejected as redundant of the
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`three accepted grounds.
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`Raymarine requests that the Board reconsider its redundancy decision on
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`one of those challenges, obviousness by Hydrography in view of U.S. Patent No.
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`7,961,552 (“Boucher ’552”). As set forth below, the challenge is not redundant
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`because it (1) relies on a different factual basis than the grounds currently
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`permitted in this IPR and (2) that factual basis has a different set of relative
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`strengths and weaknesses than the grounds already accepted. Raymarine
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`accordingly requests that the Board reconsider its decision and institute review on
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`the Hydrography/Boucher ’552 challenge.
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` STATEMENT OF FACTS
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`The claims of the ’840 patent are directed to a sonar system having a
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`specific type of sonar transducer. The relevant portion of claim 1, which is
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`exemplary, requires:
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`“[1.2] a single linear downscan transducer element positioned within
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`the housing, [1.3] the linear downscan transducer element having a
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`substantially rectangular shape configured to produce a fan-shaped
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`sonar beam having a relatively narrow beamwidth in a direction
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`1
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`parallel to a longitudinal length of the linear downscan transducer
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`element and a relatively wide beamwidth in a direction perpendicular
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`to the longitudinal length of the transducer element, [1.4] the linear
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`downscan transducer element being positioned with the longitudinal
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`length thereof extending in a fore-to-aft direction of the housing”
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`The Petition split the claimed aspects of the linear transducer into three groups, as
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`indicated by the reference numerals inserted into the quoted language of claim 1.
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`Petition (Dkt. No. 1) at 14-16.
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`Petitioner’s three challenges adopted by the Board in the IPR primarily cited
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`Hydrography (RAY-1003) to teach claim elements [1.2]-[1.4] and, to varying
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`extents, cited a secondary reference to supplement Hydrography’s teachings. For
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`example, the Hydrography/Lustig challenge cited Hydrography as teaching the
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`claimed linear transducer and cited to Lustig to supplement Hydrography with
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`respect to the fore-to-aft positioning requirement [1.4]. See Petition at 36 (“This
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`combination is proposed to supplement the teachings of Hydrography at least with
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`respect to [1.4]. . . .”) Similarly, the Hydrography/Adams challenge cited
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`Hydrography as teaching the claimed linear transducer and notes that Adams
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`teaches the fore-to-aft positioning requirement [1.4]. Petition at 41. Finally, the
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`Hydrography/Sato challenge cited Hydrography as teaching the claimed linear
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`transducer and cited to Sato to supplement Hydrography with respect to combining
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`the linear transducer with a circular transducer. Petition at 49 (“This combination
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`2
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`is proposed to supplement the teachings of Hydrography with respect to the use of
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`a linear downscan transducer and a circular downscan transducer together
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`contained in a common housing.”)
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`By contrast, the Hydrography/Boucher ’552 challenge does not rely on
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`Hydrography to supply the claimed linear transducer. Id. at 28. Instead, the
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`Petition relied on Boucher ’552 as teaching every aspect of the claimed linear
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`transducer. Id. at 28-32. Further, it is undisputed that Boucher ’552 does in fact
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`teach all aspects ([1.2]-[1.4]) of the claimed linear transducer. See Navico
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`Preliminary Response at 14-15 (asserting that Navico can swear behind the
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`Boucher ’552 reference, but not disputing that Boucher ’552 teaches the relevant
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`claim limitations). This contrasts with the Board’s decision with respect to
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`Hydrography, which found that Hydrography did not teach element [1.4]
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`(positioning of the linear transducer relative to the housing) sufficiently for
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`instituting inter partes review on grounds of anticipation.1 Thus, the
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`Hydrography/Boucher ’552 challenge is different from the other grounds presented
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`1 Although Raymarine disagrees with the Board’s view of whether Hydrography
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`discloses the claimed transducer orientation, it is not filing a motion for rehearing
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`on this issue in view of the legal standards for rehearing found at 37 C.F.R. §
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`42.71.
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`3
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`in the Petition because it relied on a single reference (Boucher ’552) as teaching
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`every aspect of the claimed linear transducer, including the requirement that it be
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`“positioned with the longitudinal length thereof extending in a fore-to-aft direction
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`of the housing.”
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` LEGAL PRINCIPLES
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`“A party may request rehearing on a decision by the Board on whether to
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`institute a trial.” 37 C.F.R. § 42.71(c). Such requests are due within 14 days of the
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`entry of a decision to institute a trial. 37 C.F.R. § 42.71(d). The Board reviews its
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`prior decision for abuse of discretion. 37 C.F.R. § 42.71(c). The party challenging
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`the Board’s decision has the burden of showing that the decision should be
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`modified. Id.
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`In the context of challenges to redundancy determinations, the Petitioner
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`carries this burden by showing the grounds disclosed in the Petition are, in fact, not
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`redundant. Grounds are non-redundant where the Petitioner has “articulated a
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`meaningful distinction in terms of relative strengths and weaknesses with respect
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`to application of the prior art reference disclosures to one or more claim
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`limitations.” Larose Indus. LLC v. Capriola Corp., CBM2012-00003 (July 22,
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`2013) (citing Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-
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`00003, Paper No. 7 (Oct. 25, 2012).
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`4
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`The Board’s order in CBM2012-00003 identifies two types of redundancy to
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`be avoided. First, horizontal redundancy exists where different prior art references
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`are applied as separate and distinct alternatives. Id. at 3. For such references,
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`“each reference has to be better in some respect or else the references are
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`collectively horizontally redundant.” Id. Vertical redundancy occurs where
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`multiple challenges use the same prior art references in both partial combination
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`and in full combination. Id. Such challenges are redundant unless there is “an
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`explanation of why the reliance in part may be the stronger assertion as applied in
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`certain instances and why the reliance in whole may also be the stronger assertion
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`in other instances.” Id. Applying these standards, the Boucher ’552/Hydrography
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`combination is neither horizontally nor vertically redundant.
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` ARGUMENT
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`Raymarine respectfully submits that the Board erred in its finding that the
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`Hydrography/Boucher ’552 challenge is redundant of the other challenges, which
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`rely primarily on Hydrography. Although the Board acknowledged one of
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`ordinary skill in the art would orient the linear transducer in a variety of positions,
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`taking into account the Board’s decision that Hydrography does not necessarily
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`show a linear transducer “positioned with the longitudinal length thereof extending
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`in a fore-to-aft direction of the housing,” the Hydrography/Boucher ’552 challenge
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`is the only remaining challenge presented in the Petition that relies on a single
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`5
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`reference (Boucher ’552) to disclose every aspect of the claimed linear transducer.
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`Moreover, the Boucher ’552 reference teaches the transducer positioning claim
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`limitations more clearly than does Hydrography.
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`The Petition explains that one purpose of the Hydrography/Boucher ’552
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`challenge was to “supplement the teachings of Hydrography with respect to . . . the
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`configuration and positioning of the transducer element.” Id. at 28. The
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`significant differences between the following images from Boucher ’552 and
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`Hydrography illustrate the different strengths of the two references’ disclosures.
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` Boucher ’552
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` Hydrography
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`See RAY-1004 Fig. 2 (Boucher ’552, cited on page 30 of the Petition), RAY-1003,
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`Fig. 11.12 (Hydrography, cited on pages 15 and 16 of the Petition).
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`Figure 2 of Boucher ’552 discloses a watercraft (10) on which is mounted a
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`fan beam transducer assembly (14) that generates a fan-shaped beam (16) directed
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`downward and in the claimed orientation with respect to the watercraft. Figure
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`11.12 of Hydrography also teaches a fan-shaped beam that is directed downward,
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`6
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`but it does not explicitly show a watercraft in the figure (the reason the Board did
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`not accept Raymarine’s anticipation challenge).
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`Figures 5 and 6 of Boucher ’552 confirm that Boucher ’552 expressly and
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`necessarily discloses every aspect of the claimed linear transducer. These figures
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`teach that the Boucher ’552 transducer element 32 (which generates the fan-shaped
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`beam) is a substantially rectangular transducer element that is positioned with its
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`longitudinal length extending in a fore-to-aft direction of the housing 24:
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`when transducer
`element 32 is
`arranged as
`shown in FIG. 6,
`the generated fan
`beam is wider in
`the direction
`perpendicular to
`the longitudinal
`length of the
`transducer, as
`shown by
`indicator 28a
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`(RAY-1005, Fig. 5, Fig. 6 (cited on page 31 of the Petition). Thus, Boucher ’552
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`is stronger than Hydrography (as interpreted by the Board’s Decision) with respect
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`to teaching every aspect of the claimed linear transducer.
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`For similar reasons, the Hydrography/Boucher ’552 challenge is stronger
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`than the Hydrography/Lustig, Hydrography/Adams, and Hydrography/Sato
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`challenges as presented in the Petition with respect to elements [1.2]-[1.4].
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`7
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`In the other direction, Hydrography and the other references in the adopted
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`challenges are stronger than Boucher ’552 in some respects. For example,
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`Hydrography expressly teaches the sequential scanning and sonar signal processor
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`claim elements ([1.6] and [1.7]), whereas the Petition does not rely on Boucher
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`’552 for teaching those elements. Moreover, Boucher ’552 is subject to a
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`challenge to its prior art status, as shown by the declaration of Navico employee
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`Alan Proctor. NAV-2001. The fact that Navico went to the trouble of preparing
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`and submitting a 32-page employee declaration suggesting that it would be able to
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`swear behind Boucher ’552 is an indication that the reference is non-cumulative,
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`and indeed, that the reference is significant to the outcome of this matter.
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`Because Boucher ’552 and Hydrography have different relative strengths
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`and teachings, the references are non-cumulative. Specifically, Boucher ‘552 is
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`not horizontally cumulative of Hydrography because Boucher ’552 explicitly
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`teaches a substantially rectangular linear downscan transducer element that is
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`positioned with its longitudinal length extending in a fore-to-aft direction of the
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`housing, and emits a fan-shaped sonar beam downward.. Similarly, the fact that
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`Hydrography and the other references more clearly disclose the other, non-
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`transducer limitations than Boucher ’552 also shows that the grounds are non-
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`cumulative. Finally, the Board already resolved any potential vertical redundancy
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`issue when it declined to institute review based on Hydrography as an anticipatory
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`8
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`reference. Thus, the Hydrography/Boucher ‘552 challenge is not cumulative of the
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`grounds adopted in the Board’s Decision to institute an inter partes review.
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` CONCLUSION
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`Because the Hydrography/Boucher ‘552 challenge is neither horizontally nor
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`vertically cumulative to the other three adopted grounds, it was error for the
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`Decision to institute to find to the contrary. Raymarine accordingly requests that
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`the Board grant this motion for rehearing and permit the Hydrography/Boucher
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`‘552 challenge to go forward in this IPR.
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` Dated: December 26, 2013 Respectfully submitted,
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`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
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`9
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that service
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`was made on Patent Owner Navico as detailed below.
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`Date of service December 26, 2013
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`Manner of service Electronic Mail (mike.mccoy@alston.com)
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`Documents served IPR2013-00355: Motion For Rehearing Of Decision To
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`Institute By Raymarine, Inc.
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`Persons served Michael D. McCoy
`Alston & Bird LLP
`Bank of America Plaza
`101 South Tryon Street, Ste. 4000
`Charlotte, NC 28280-4000
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`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
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`10
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