IPR2013-00571
`
`US. Pat. No. 8,135,398
`Docket No.: 6521—0104L
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`V.
`
`VIRGINIA INNOVATION SCIENCES, INC.
`Patent Owner
`
`Case IPR2013-00571
`
`Patent 8,135,398
`
`PATENT OWNER VIRIGINA INNOVATION SCIENCE, INC.'S
`PRELIMININARY RESPONSE
`
`PURSUANT TO 37 C.F.R. § 42.107
`
`

`

`IPR2013-00571
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`US. Pat. NO. 8,135,398
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`TABLE OF CONTENTS
`
`I.
`
`11.
`
`INTRODUCTION ....................................................................................... 1
`
`SUMMARY OF ARGUMENT ................................................................... 7
`
`A. CORRECTED PETITION AND DECLARATION ARE DEFECTIVE .............................. 9
`
`B.
`
`SAMSUNG'S EXPERT DECLARATION IS DEFECTIVE AND ENTITLED TO LITTLE
`
`OR NO WEIGHT ...................................................................................................... 1 1
`
`C. PROPOSED GROUNDS OF REJECTION ARE HORIZONTALLY AND VERTICALLY
`
`REDUNDANT ........................................................................................................... 12
`
`D. PROPOSED REJECTIONS IN GROUND 3 ASK THE BOARD TO PICK AND CHOOSE
`
`FROM OVER 500 POSSIBLE COMBINATIONS WITHOUT ANY GUIDANCE .................... 13
`
`E.
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`PALIN FAILS TO DISCLOSE THE LIMITATION "CONVERTING THE MULTIMEDIA
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`CONTENT ITEM FOR REPRODUCTION ACCORDING TO A DETERMINED SIGNAL FORMAT
`
`OF THE DESTINATION DEVICE" ................................................................................ 14
`
`F. KARAOGUZ FAILS TO DISCLOSE A "WIRELESS TERMINAL APPARATUS" WHICH
`
`RECEIVES A MULTIMEDIA CONTENT ITEM THROUGH A WIRELESS COMMUNICATION
`
`NETWORK AND CONVERTS THE MULTIMEDIA CONTENT ITEM FOR REPRODUCTION
`
`ACCORDING TO A DETERMINED SIGNAL FORMAT OF A DESTINATION DEVICE .......... 16
`
`III.
`
`IV.
`
`STANDARD FOR GRANTING INTER PARTES REVIEW ................... 17
`
`VIOLATIONS OF INTER PARTES REVIEW STATUTES AND
`
`REGULATIONS ...................................................................................................... 19
`
`A. NO SUBSTANTIVE CLAIM CONSTRUCTION PRESENTED ................................... 19
`
`B. GROUND 2 IS HORIZONTALLY REDUNDANT TO GROUND 1 AND NOT ENTITLED
`
`TO CONSIDERATION ............................................................................................... 22
`
`C. GROUND 3 IS VERTICALLY REDUNDANT TO GROUNDS 1 AND 2 AND NOT
`
`ENTITLED TO CONSIDERATION .............................................................................. 23
`
`D. EXPERT TESTIMONY 1S ENTITLED TO LITTLE OR NO WEIGHT ............................ 26
`
`I. No explanation for claim interpretation conclusions ............................... 27
`2.
`Incorrect legal standard ofclaim construction applied............................ 28
`3. No explanation ofthe process ofarriving at the interpretation ............... 29
`
`V.
`
`TECHNICAL OVERVIEW OF FILE TRANSFER SYSTEMS AND
`
`VIDEO SIGNAL FORMATS .................................................................................. 30
`
`A. TRANSMISSION PROTOCOLS ............................................................................ 30
`
`B. VIDEO SIGNAL FORMATS AND BANDWIDTH REQUIREMENTS .......................... 31
`C. VIDEO SIGNAL COMPRESSION FORMATS ......................................................... 32
`
`D. FILE TRANSFER SYSTEMS ................................................................................ 33
`
`E. WIRELESS TRANSMISSION BANDWIDTHS ........................................................ 34
`
`ii
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`IPR2013-00571
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`US. Pat. No. 8,135,398
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`VI.
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`DEFICIENCIES OF REFERENCES CITED IN PROPOSED GROUNDS
`
`OF REJECTION ...................................................................................................... 35
`
`A. ALLEGED ANTICIPATION REJECTIONS BASED ON PALIN ................................ 35
`
`1. Legal Standard ofAnticipation ................................................................. 35
`2. Palin does not disclose converting a multimedia content item. ................ 38
`B. ALLEGED ANTICIPATION REJECTIONS BASED ON KARAOGUZ ........................ 41
`
`I. Karaoguz does not disclose a wireless terminal apparatus that performs a
`conversion. ....................................................................................................... 42
`
`2. Karaoguz does not disclose a wireless terminal apparatus that receives
`and converts a multimedia content item. ......................................................... 44
`
`C. ALLEGED OBVIOUSNESS REJECTIONS ............................................................. 49
`
`1. Ground 3 is defective................................................................................. 49
`2. Ground 4 is defective................................................................................. 51
`D. CONCLUSION ................................................................................................... 53
`
`VII.
`
`RELIEF REQUESTED — DENIAL OF TRIAL ........................................ 54
`
`iii
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`

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`IPR2013—00571
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`US. Pat. No. 8,135,398
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Advanced Display Sys., Inc. v. Kent State Univ, 212 F.3d 1272 (Fed. Cir. 2000) 37
`Connell v. Sears, Roebuck & Co., 722 F.2d 1542 (Fed. Cir. 1983) ................. 36, 37
`Estee Lauder, Inc. v. L'Oreal, SA, 129 F.3d 588 (Fed. Cir. 1997) ....................... 18
`Gechter v. Davidson, 116 F.3d 1454 (Fed. Cir. 1997) .......................................... 36
`Graham v. John Deere, 383 US. 1, 17 (1966) ....................................... 7, 25, 49, 53
`In re Arkley, 455 F.2d 586 (C.C.P.A 1972) ............................................................ 37
`Lemelson v. United States, 752 F .2d 1538, 224 USPQ 526 (Fed. Cir. 1985) ....... 38
`Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452
`(Fed. Cir. 1984) .................................................................................................... 36
`Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) ....................................... 28
`Rohm & Haas Co. v. Brotech Corp, 127 F.3d 1089 (Fed. Cir. 1997) ............... 5, 29
`Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008) ..................... 37
`Schenck v. Nortron Corp, 713 F .2d 782, 218 USPQ 698 (Fed. Cir. 1983) ............. 9
`Stratoflex, Inc. v. Aeroquip Corp, 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983)
`................................................................................................................................ 9
`
`Therasense, Inc. v. Becton, Dickinson and Co., 593 F .3d 1325 (Fed. Cir. 2010). 16,
`36
`‘
`
`Zund Systemtechnik Ag & Zund Am, Inc. Requester, No. 201 1-01353 7, 2012 WL
`527411 (Bd. Pat. App. & Interf. Feb. 16, 2012) ............................................. 18
`
`Statutes
`
`35 U.S.C. § 102 ................................................................................................. 37, 40
`35 U.S.C. § 132 ......................................................................................................... 8
`35 U.S.C. § 313 ......................................................................................................... 1
`35 U.S.C. § 314 ................................................................................................ passim
`
`Rules
`
`37 C.F.R. § 42.100 .................................................................................................. 19
`37 C.F.R. § 42.104(b)(3) ................................................................................. 3, 9, 20
`37 C.F.R. § 42.107 .................................................................................................. i, 1
`37 C.F.R. § 42.108 .............................................................................................. 7, 18
`37 C.F.R. § 42.20(c) .................................................................................. 2, 7, 14, 53
`37 C.F.R. § 42.65 .......................................................................................... 5, 19, 31
`Fed. R. Evid. 705 ..................................................................................................... 19
`
`iV
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`IPR2013—00571
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`US. Pat. No. 8,135,398
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`Other Authorities
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`Board Decision in CBM2012-00003 .................................................... 13, 14, 24, 27
`Changes to Implement Inter Partes Review Proceedings, 77 Fed. Reg. 48,680.... 19
`MPEP 2141.02 .................................................................................................. 10,29
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012)... 18, 19,
`23
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`

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`IPR2013-0057l
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`US. Pat. No. 8,135,398
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`EXHIBIT LIST
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`The Exhibits referenced in Virginia Innovation Sciences‘ Preliminary
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`Response are listed in the Exhibit List being filed concurrently herewith.
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`Vi
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`

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`IPR2013-0057l
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`US Pat. No. 8,135,398
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`Patent Owner Virginia Innovation Sciences, Inc.
`
`(hereinafter "Virginia
`
`Innovation") respectfully submits this Preliminary Response to the Corrected
`
`Petition for
`
`inter partes review dated September 16, 2013 ("the Corrected
`
`Petition") of US. Patent No. 8,135,398 (Petitioner's EX. 1001, hereinafter "the
`
`'398 patent") filed by Samsung Electronics Co., Ltd.
`
`("Samsung" or "Petitioner").
`
`This Preliminary Response is timely under 35 U.S.C. § 313 and 37 C.F.R. §
`
`42.107(b) as it is being filed within three months of the Notice of Filing Date
`
`mailed September 10, 2013 ("Notice").
`
`I.
`
`INTRODUCTION
`
`The Corrected Petition should be denied for failing to establish that there is a
`
`reasonable likelihood that any one of claims 15, 57, 58, and 60—63 (collectively
`
`"challenged claims") of the '398 patent is unpatentable. See 35 U.S.C. § 314(a).
`
`Claim 55, from which claims 57 and 58 depend, is not named in the Corrected
`
`Petition as being challenged and no statutory basis for rejecting claim 55 is
`
`proposed.
`
`A fundamental flaw of the Corrected Petition is Petitioner's failure to explain
`
`the claim construction adopted by Petitioner in alleging unpatentability of the
`
`claims.
`
`Petitioner's allegations of unpatentability are based on some claim
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`construction adopted by Petitioner, yet Petitioner has not shared this claim
`
`construction with Patent Owner or the Board.
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`

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`IPR2013-0057l
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`US. Pat. No. 8,135,398
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`Another common theme throughout the Corrected Petition is Petitioner's
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`disregard for legal standards of anticipation and obviousness, and violations of the
`
`Inter Partes Review statutes and regulations. When alleging anticipation,
`
`Petitioner fails to explain which alleged teachings of a reference correspond to the
`
`claimed features; and when alleging obviousness, Petitioner merely asserts its
`
`View of individual limitations and separate references, without considering the
`
`claimed invention as a whole, and without explaining how the proposed
`
`teachings of the references would be modified or combined to meet all of the
`
`claimed limitations (see,
`
`e. g., Corrected Petition at 26,
`
`table row "[15—pre]
`
`Ground 3"). The burden of establishing prima facie anticipation and obviousness
`
`is on Petitioner. 37 C.F.R. § 42.20(c). However, Petitioner has not carried its
`
`burden, and instead invites the Board to carry the burden to demonstrate prima
`
`facie unpatentability.
`
`This is against
`
`the law.
`
`The Board should decline
`
`Petitioner's invitation, because Petitioner has not established that
`
`there is a
`
`reasonable likelihood that Petitioner will prevail with respect
`
`to any of the
`
`challenged claims.
`
`The Corrected Petition fails to meet the threshold standard for instituting an
`
`inter partes review for at least the following reasons:
`
`1.
`
`The Corrected Petition and Dr. Almeroth's declaration are both
`
`defective for failing to identify "[h]ow the challenged claim is to be construed," in
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`

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`IPR2013—0057l
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`US. Pat. No. 8,135,398
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`Violation of 37 C.F.R. § 42.104(b)(3) for the second time. Petitioner violated this
`
`rule once already by filing the original Petition on September 5, 2013. The Board
`
`found the original Petition defective and requested Petitioner to correct the defects.
`
`"A review of the petition identified the following defect(s): 1.) Claim Construction:
`
`In the instant petition no individual claim terms are given specific construction."
`
`Notice at 2.1 Yet, the Corrected Petition is still defective.
`
`The Corrected Petition includes merely five lines of added text purporting to
`
`present claim construction of some terms (Corrected Petition at 4, lines 3-7), but
`
`lacks construction of any claim viewed as a whole, nor of the features which are
`
`central to Petitioner's allegations. Petitioner makes vague allegations that the
`
`applied references teach all of the claimed features, yet articulates no claim
`
`construction that could be alleged as supporting Petitioner's assertions. Whether
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`Petitioner is applying an appropriate claim construction ~ broadest reasonable
`
`interpretation in the context of the specification —- is often a central issue to be
`
`evaluated by the Board. Yet, the Corrected Petition presents no such construction
`
`for the Board to consider.
`
`By failing to present its claim construction, Petitioner attempts to establish
`
`unpatentability based on vague and unsupported allegations, but
`
`instead only
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`1 The Notice also recognized Petitioner's impermissible attempt to present its
`arguments in single-spaced format, in violation of 37 C.F.R. § 42.6, by blending
`attorney arguments into claim charts in the original Petition of September 5, 2013.
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`

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`IPR2013—00571
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`US. Pat. No. 8,135,398
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`highlights the fact that the references lack material limitations. Tellingly, the
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`Corrected Petition fails to provide a claim construction of claimed features which
`
`are shown in the sections below to be lacking in the applied references. For
`
`example, the Corrected Petition does not construe
`
`...converting the multimedia
`
`content item for reproduction according to a determined signal format of the
`
`destination device..., which is central to Petitioner's arguments regarding US.
`
`Patent No. 7,580,005 to Palin ("Palin"), nor does it construe a "wireless terminal
`
`apparatus," which is central to Petitioner's allegations regarding US. Patent No.
`
`8,028,093 to Karaoguz et a1. ("Karaoguz").
`
`Similarly, the declaration of Dr. Almeroth lacks any explanation or opinion
`
`of Petitioner's claim construction, yet Petitioner did not file a corrected declaration,
`
`relying instead on the original, defective declaration. These defects are fatal to
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`Samsung's Corrected Petition, as no reasonable likelihood of prevailing can be
`
`established Without an articulated claim construction and application of the
`
`references to that construction.
`
`2.
`
`The declaration of Samsung's expert, Dr. Kevin C. Almeroth
`
`(Petitioner's Ex. 1005),
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`is entitled to little or no weight because it does not
`
`articulate what he considers the "broadest reasonable interpretation" of the claims;
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`it does not explain how he arrived at his unarticulated interpretation; and it does
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`not explain the application of the cited references against
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`the unarticulated
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`IPR2013-00571
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`US. Pat. No. 8,135,398
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`interpretation of the claims. Thus, Dr. Almeroth fails to disclose the underlying
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`facts on which his opinions are based, in violation of 37 CPR. § 42.65(a). The
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`declaration of an expert who does not disclose the bases for his opinions is entitled
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`to no weight. 37 C.F.R. § 42.65(a). Rohm & Haas Co. v. Brotech Corp, 127 F.3d
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`1089, 1092 (Fed. Cir. 1997).
`
`3.
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`Even if given weight, Dr. Almeroth‘s declaration mischaracterizes the
`
`prior art and the claims of the '398 patent and, thus, fails to establish a reasonable
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`likelihood that Samsung will prevail on any of its proposed rejections. The
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`declaration is also internally inconsistent and inconsistent with the Corrected
`
`Petition. For example, Dr. Almeroth is inconsistent regarding which claims he
`
`believes are the challenged claims, at times referring to "claims 15, 57, 58 and 60—
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`63 in the '398 patent ('the challenged claims')" (Samsung Ex. 1005, 11 2) and at
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`other times referring to "[c]hallenged claims 15, _1_9, 57, 58, 60, 61, 62, 63, and 6_5
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`(Samsung Ex. 1005, fl 122, emphasis added), inexplicably adding claims 19 and
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`65. Without adequate supporting testimony, Samsung cannot establish a
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`reasonable likelihood of prevailing on any of its invalidity contentions, and its
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`Corrected Petition inevitably fails.
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`4.
`
`The Corrected Petition presents horizontally and vertically redundant
`
`grounds of rejection which are cumulative and not all entitled to consideration.
`
`The proposed anticipation rejection based on Karaoguz (Ground 2) is horizontally
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`

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`IPR2013—0057l
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`US. Pat. No. 8,135,398
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`redundant
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`to the proposed anticipation rejection based on Palin (Ground 1).
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`Because the references are not identical, each must be better in some respect.
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`However, the Corrected Petition does not explain why, much less how, Karaoguz
`
`or Palin is better than the other, resulting in horizontal redundancy.
`
`The proposed obviousness rejection based on Palin in View of Karaoguz
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`(Ground 3) is vertically redundant with each of Ground 1 and Ground 2. Each of
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`Palin and Karaoguz are alleged to anticipate claim 15, yet the rejection which
`
`applies portions of these two references in combination does not explain why
`
`reliance on a portion of a reference may be a stronger assertion as applied in
`
`certain instances and why the reliance on the entirety of the reference may be the
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`stronger assertion in other instances. Without a bi-directional explanation, the
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`assertions are vertically redundant. Multiple grounds of rejection presented in a
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`redundant manner with no meaningful distinction between them are not all entitled
`
`to consideration.
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`5.
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`Finally,
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`the applied references
`
`simply lack material
`
`limitations
`
`required by all challenged claims. Samsung's attempt to map claim features to the
`
`prior art relies on mischaracterizations of both the claimed invention and the prior
`
`art — Palin and Karaoguz do not expressly or implicitly teach material limitations
`
`of the challenged claims and, thus, neither of Palin and Karaoguz anticipates
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`

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`IPR2013—0057l
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`US. Pat. No. 8,135,398
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`independent claim 15, nor do these references in combination with each other or
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`other secondary references render obvious any of the challenged claims.
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`11.
`
`SUMMARY OF ARGUMENT
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`Samsung has not satisfied the statutory threshold of instituting inter partes
`
`review of the '398 patent. The Board may institute inter partes review only when
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`"the information presented in the petition
`
`and any response
`
`shows that there
`
`is a reasonable likelihood that petitioner would prevail with respect to at least one
`
`of the claims challenged in the petition." 35 U.S.C. § 314. See also 37 CPR. §
`
`42.108(c). The Petitioner has the burden of proof to establish that it is entitled to
`
`the requested relief. 37 CPR. § 42.20(c). Samsung has not met this threshold.
`
`Samsung's allegations do not establish prima facie unpatentability of the
`
`challenged claims. The alleged anticipation grounds (Ground 1 and Ground 2) are
`
`horizontally redundant with no explanation of why one is more applicable than the
`
`other. The alleged obviousness rejections in Ground 3 are vertically redundant
`
`with Grounds l and 2, and importantly fail to explain the differences between the
`
`claimed invention and the prior art, contrary to the requirements set forth in
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`Graham v. John Deere, 383 US. l, 17 (1966). The alleged obviousness rejections
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`do not perform the critically important factual inquiry to ascertain what is lacking
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`in each of Palin and Karaoguz, but merely list both references as apparent
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`

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`IPR2013—00571
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`US. Pat. No. 8,135,398
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`alternatives for each recited claim limitation, inviting the Board to pick and choose
`
`which teaching to apply against each claim feature. Thus, the rejections in Ground
`
`3 fail to "ascertain[] the differences between the prior art and the claims under
`
`consideration," contrary to the explicit requirements set forth in Graham. Such
`
`proposed rejections cannot establish primafacie obviousness.
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`In addition, the lack of specifically identifying which teaching is being
`
`applied to each feature violates 35 U.S.C. § 132, as it does not give Patent Owner
`
`sufficient notice of the "reasons for such rejection
`
`together with such
`
`information
`
`as may be useful in judging the propriety of continuing." 35 U.S.C.
`
`§ 132.
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`Further, the Corrected Petition does not identify any single reference, or any
`
`combination of references, that teaches all material limitations recited in any of the
`
`challenged claims. All claims at issue in the '398 patent require:
`
`(a)
`
`"A wireless terminal apparatus for converting and sending of content
`
`to devices;"
`
`(b)
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`"receiving a multimedia content item originated from a source located
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`outside a designated location and destined for a destination device located within
`
`the designated location
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`through a wireless communication network by the
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`wireless terminal apparatus," and
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`IPR2013—00571
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`US. Pat. No. 8,135,398
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`(c)
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`"converting the multimedia content item for reproduction according to
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`a determined signal format of the destination device."
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`No single reference teaches all of these features, nor does any combination
`
`of applied references.
`
`A.
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`Corrected Petition and Declaration are defective
`
`The Corrected Petition and Dr. Almeroth's declaration are both defective for
`
`failing to identify "[h]ow the challenged claim is to be construed," in Violation of
`
`37 C.F.R. § 42.104(b)(3). The Board found the original Petition defective and
`
`requested Petitioner to correct the defects. "A review of the petition identified the
`
`following defect(s): 1.) Claim Construction:
`
`In the instant petition no individual
`
`claim terms are given specific construction." Notice at 2. Yet, the Corrected
`
`Petition is still defective.
`
`The Corrected Petition adds five lines of text to the defective Petition,
`
`purporting to present claim construction of some terms (Corrected Petition at 4,
`
`lines 3-7), but lacks construction of the claim terms which are central to Samsung’s
`
`allegations, nor of any claim viewed as a whole as required for evaluating
`
`obviousness. For determining obviousness, the claimed invention as a whole must
`
`be considered. Stratoflex, Inc. v. Aeroquz'p Corp, 713 F.2d 1530, 218 USPQ 871
`
`(Fed. Cir. 1983); Schenck v. Nortron Corp, 713 F.2d 782, 218 USPQ 698 (Fed.
`
`Cir. 1983). See also MPEP 2141.02.
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`

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`IPR2013-0057l
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`US. Pat. No. 8,135,398
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`Importantly, the Corrected Petition lacks construction of material limitations
`
`which are shown to be lacking in Palin and Karaoguz. This omission of claim
`
`construction for such important limitations is telling and highlights fatal flaws
`
`of the Corrected Petition (and the original Petition). Petitioner's proposed
`
`Ground 1 hinges on a mischaracterization of Palin's "splitting application" as
`
`allegedly performing conversion of a multimedia content item; and Ground 2
`
`hinges on a mischaracterization and erroneous application of Karaoguz's
`
`separated functionality of media exchange server 113 and media processing
`
`system 102. Petitioner chose to omit a construction for the claimed "converting
`
`the multimedia content item for reproduction according to a determined signal
`
`format of the destination device" to give itself room to make vague allegations
`
`about features which are simply lacking in Palin and Karaoguz. As explained
`
`below, the "splitting application" of Palin does not perform any conversion of a
`
`multimedia content item according to a determined signal format of a destination
`
`device. Petitioner likewise did not provide a construction for the claimed "wireless
`
`terminal apparatus" in an attempt to attribute alleged functionality provided by
`
`disparate components in Karaoguz to the single wireless terminal apparatus recited
`
`in the claims.
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`The declaration of Dr. Almeroth likewise does not present any claim
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`construction and merely refers to the "broadest reasonable interpretation,"
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`10
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`IPR2013-00571
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`US. Pat. No. 8,135,398
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`without explaining What that interpretation is. Samsung Ex. 1005,
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`11 188.
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`However, Petitioner did not even attempt to cure these problems by filing a
`
`corrected declaration. These defects are fatal to Samsung's Corrected Petition, as
`
`no reasonable likelihood of prevailing can be established without an articulated
`
`claim interpretation and application of the references to that interpretation.
`
`B.
`
`Samsung's Expert Declaration is Defective and Entitled to Little
`or N0 Weight
`
`Samsung's expert testimony is entitled to little or no weight because Dr.
`
`Almeroth does not disclose the underlying facts or data on which his opinion is
`
`based; and the testimony is factually incorrect.
`
`"Expert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled to
`
`little or no weigh ." 37 C.F.R. § 42.65(a).
`
`Dr. Almeroth alleges,
`
`in conclusory fashion,
`
`that "[u]nder the broadest
`
`reasonable interpretation of the claims, both of these operations change the Video
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`signal." Samsung EX. 1005, 11 188. The reference to "both of these operations"
`
`points to Palin‘s "splitting application" and Palin's "Bluetooth protocol stack." Id.
`
`
`However, Dr. Almeroth does not explain what he considers the broadest reasonable
`
`interpretation of the claims; does not explain how or why he arrived at his
`
`unarticulated interpretation; and does not explain how he applies the references
`
`11
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`

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`IPR2013—00571
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`U.S. Pat. No. 8,135,398
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`against the unarticulated interpretation of the claims. For example, the reference to
`
`"chang[ing] the video signal" is misplaced and overlooks the recited "multimedia
`
`content
`
`item" in the challenged claims. Dr. Almeroth does not explain the
`
`relationship between a multimedia content item and a video signal.
`
`In addition, the declaration is internally inconsistent and inconsistent
`
`with the Corrected Petition. The declaration refers to "[c]hallenged claims 15,
`
`_1__9_, 57, 58, 60, 61, 62, 63, and 65 (Samsung Ex. 1005, 11 122, emphasis added),
`
`while the Corrected Petition does not challenge claim 19 and 65.
`
`In sum, the
`
`expert testimony is entitled to little or no weight and cannot establish a reasonable
`
`likelihood that any of the challenged claims is unpatentable.
`
`C.
`
`Proposed grounds of rejection are horizontally and vertically
`redundant
`
`The proposed anticipation rejection based on Karaoguz (Ground 2) is
`
`horizontally redundant with the proposed anticipation rejection based on Palin
`
`(Ground 1). Because the references are not identical, each must be better in some
`
`respect, yet the Corrected Petition does not explain why, much less how, Karaoguz
`
`or Palin is better than the other. As the Board explained, this is horizontal
`
`redundancy. CBM2012-00003 (Doc. 7 at 3).
`
`The proposed obviousness rejection based on Palin in view of Karaoguz
`
`(Ground 3) is vertically redundant with each of Ground 1 and Ground 2. Each of
`
`12
`
`

`

`IPR2013-0057l
`
`US. Pat. No. 8,135,398
`
`Palin and Karaoguz are alleged to anticipate claim 15, yet the rejection which
`
`applies these two references in combination does not explain why reliance on a
`
`portion of a reference may be a stronger assertion as applied in certain instances
`
`and why the reliance on the entirety of the reference may be the stronger assertion
`
`in other instances. Without a bi-directional explanation, the assertions are
`
`vertically redundant. CBM2012-00003 (Doc. 7 at 3). Multiple grounds of
`
`rejection presented in a redundant manner with no meaningful distinction between
`
`them are not all entitled to consideration. Id.
`
`D.
`
`Proposed rejections in Ground 3 ask the Board to pick and choose
`from over 500 possible combinations without any guidance
`
`Ground 3 alleges that claims 15, 57, and 60-62 are unpatentable under 35
`
`U.S.C. § 103(a) over Palin in View of Karaoguz. Corrected Petition at 13. The
`
`corresponding claim chart makes no attempt
`
`to identify which of the two
`
`references is being applied for each claim feature.
`
`Instead, the claim chart invites
`
`the Board to pick and choose from over 500 possible combinations2 to arrive at its
`
`own conclusion of obviousness.
`
`Such incoherent allegations do not meet the
`
`statutory guidelines of Inter Partes Review. Petitioner has the burden of proof to
`
`establish that there is a reasonable likelihood that any claim is unpatentable. 37
`
`CPR. § 42.20(c) . Petitioner has not carried its burden.
`
`2 There are allegedly two possible references to be applied to each of the
`nine identified features, resulting in 29:512 possibilities.
`
`l3
`
`

`

`IPR2013—00571
`
`US. Pat. No. 8,135,398
`
`E.
`
`Palin fails to disclose the limitation "converting the multimedia
`content item for reproduction according to a determined signal
`format of the destination device"
`
`Each of the challenged claims requires the limitation "converting the
`
`multimedia content item for reproduction according to a determined signal format
`
`of the destination device.’ As described in the specification (e.g.,
`
`'398 patent,
`
`15:52-59) and as required by the challenged claims, a processor executing program
`
`code converts the multimedia content
`
`item for reproduction according to a
`
`determined signal format of the destination device into a converted multimedia
`
`content item. The conversion starts with input — a multimedia content item, and
`
`results in a "converted multimedia content item." The converted multimedia
`
`content item cannot be the same multimedia content item that was received from a
`
`source. Otherwise, it would not be a "converted multimedia content item."
`
`Palin does not disclose or teach converting a multimedia content item. This
`
`is because Palin only discloses, at best, converting the transmission protocol
`
`used to transmit a video signal (e.g., GSM, Wi-Fi, Bluetooth), rather than the
`
`conversion of the signal format of the multimedia content item.
`
`53
`
`54
`
`55
`
`
`
`14
`
`

`

`IPR2013-0057l
`
`US. Pat. No. 8,135,398
`
`As shown in Fig. 4(a) of Palin (reproduced above), the data received by the
`
`mobile terminal in Palin consists of three parts: header 58, mobile phone part 54,
`
`and TV receiver part 56. Mobile phone part 54 represents the video signal for
`
`display on the mobile terminal. TV receiver part 56 represents the video signal for
`
`display on an alternative display, such as a TV. Palin splits mobile phone part 54
`
`and TV receiver part 56 using a "splitter" application 218. The mobile terminal
`
`can then display mobile phone part 54. TV receiver part 56 is then transmitted, via
`
`Bluetooth, to a TV.
`
`Even if the mobile phone part or the TV receiver part is each considered to
`
`be a "multimedia content item," there is no disclosure or teaching in Palin of
`
`converting mobile phone part 54 or TV receiver part 56, 126., Palin does not
`
`disclose conversion of a multimedia content item. Rather, Palin only discloses
`
`splitting the two respective parts and then transmitting the TV receiver part via
`
`Bluetooth to a TV.
`
`In Palin, the mobile terminal transmits the same video
`
`_s_ign_al it receives. The same video signal comes in and the same video signal
`
`goes out - there is no conversion of a video signal of a multimedia content
`
`item. In contrast, all of the challenged claims require conversion of a multimedia
`
`content
`
`item for reproduction according to a determined signal format of the
`
`destination device. Palin fails to disclose this material limitation.
`
`15
`
`

`

`lPR2013—00571
`
`US. Pat. No. 8,135,398
`
`Karaoguz fails to disclose a "wireless terminal apparatus" which
`F.
`receives a multimedia content item through a wireless communication
`network and converts the multimedia content item for reproduction
`according to a determined signal format of a destination device
`
`Each of the challenged claims requires "a wireless terminal apparatus for
`
`converting and sending of content
`
`to devices," the apparatus "receiving a
`
`multimedia content item originated from a source located outside a designated
`
`location
`
`through a wireless communication network," and "converting the
`
`multimedia content
`
`item for reproduction according to a determined signal
`
`format of the destination device." Thus, each challenged claim requires that the
`
`same element, namely the "Wireless terminal apparatus," perform both wireless
`
`reception of a multimedia content item, as well as conversion of that multimedia
`
`content item according to a determined signal format.
`
`Karaoguz does not teach or suggest such features.
`
`In fact, the proposed
`
`rejection applying Karaoguz does not even attempt to demonstrate prima facie
`
`anticipation, which requires a single reference to teach every claim limitation "as
`
`arranged in the claims.
`
`See e.g., Therasense, Inc. v. Becton, Dickinson and C0.,
`
`593 F.3d 1325, 1332 (Fed. Cir. 2010). The Corrected Petition identifies tw_o
`
`different and disjointed