UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`Petitioner,
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`v.
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`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`
`Case IPR 2014-0085
`Patent No. 7,010,536
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`PRELIMINARY RESPONSE BY PATENT OWNER
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`UNDER 37 C.F.R. § 42.107
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`
`Case IPR 2014-0085
`Patent No. 7,010,536
`
`
`
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
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`TABLE OF CONTENTS
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`I. TECHNOLOGY BACKGROUND .................................................................... 5
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`II. OVERVIEW OF THE ASSERTED PRIOR ART .......................................... 9
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`III. THE PETITION SHOULD BE DENIED. .................................................... 11
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`A. The Petition Fails To Explain the Relevance Of The References To The
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`Claims As Required By 37 C.F.R. § 104(b)(5)................................................ 12
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`B. The Petition Violates Rule 42.6 By Incorporating the Substance of Its
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`Arguments by Reference .................................................................................. 16
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`C. The Prior Art Raised in the Petition is Cumulative with Prior Art Asserted by
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`the Petitioner in Another Petition..................................................................... 20
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`D. There Is No Reasonable Likelihood of the Claims Being Invalidated. ........... 22
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`1. The Petitioner Fails to Construe and/or Incorrectly Construes Terms Material to
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`all Claims.............................................................................................................. 22
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`a. “Container” ................................................................................................. 25
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`b. “Register” .................................................................................................... 27
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`c. “Gateway” ................................................................................................... 29
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`d. “Encapsulated”/”Encapsulating” ................................................................ 31
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`e. ““Active Space Register” / “Passive Space Register” / “Neutral Space
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`Register” ...................................................................................................... 32
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`f. “Acquire Register” ...................................................................................... 33
`ii
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`2. There Is No Reasonable Likelihood Of Claims 2-14 or 16 Being Anticipated
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`by Anderson (Ex. 1005). ............................................................................... 33
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`3. There Is No Reasonable Likelihood Of Claims 2, 4-8, 13, and 16 Being
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`Rendered Obvious in View of Anderson (Ex. 1006) and “General
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`Knowledge” ................................................................................................... 38
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`4. There Is No Reasonable Likelihood Of Claims 2-14 or 16 Being Anticipated
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`by Dussell (Ex. 1006). ................................................................................... 40
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`IV. CONCLUSION ................................................................................................ 44
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`ii
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`PRELIMINARY RESPONSE BY PATENT
`OWNER UNDER 37 C.F.R. § 42.107
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`Patent Owner Evolutionary Intelligence LLC hereby respectfully submits
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`this Preliminary Response to the Petition seeking inter partes review of U.S. Patent
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`No. 7,010,536.
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`The Petition is deficient and relies on prior art references that are entirely
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`distinct from the ’536 patent. The Petition should be rejected for four independent
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`reasons. First, the Petition fails to explain the relevance of the prior art to the
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`claims as required by 37 C.F.R. § 104(b)(5), including failing to establish that the
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`prior art discloses all elements “arranged as in the claims.” Second, the Petition is
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`deficient because it violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against
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`incorporating other arguments by reference. Third, the Petition relies on prior art
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`that is cumulative of prior art raised in another pending petition filed by Petitioner,
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`as well as with prior art considered during the prosecution of the underlying
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`application. Finally, even setting aside these critical defects, the Petition should be
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`rejected on the merits, because it fails to demonstrate a reasonable likelihood of
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`any claims being invalid—particularly because it relies on unreasonably broad
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`constructions for and fails to construe terms that are material to all of the claims at
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`issue. For at least these reasons, the Petition does not show a reasonable likelihood
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`4
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`of prevailing with respect to any of the challenged claims, and inter partes review
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`should not be instituted.
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`This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is
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`being filed within three months of the October 29, 2013 mailing date of the Notice
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`granting the Petition a filing date of October 23, 2013.
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`I.
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`Technology Background
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`The ’536 patent describes a “System and Method for Creating and
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`Manipulating Information Containers With Dynamic Registers.” The invention is
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`directed at improving the processing of “containerized” data, such as the data that
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`makes up web pages and documents. At the time of the invention, processing
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`information resources on a computer network (e.g., the internet) was primarily
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`static, in that the processing did not result in dynamic modifications that would
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`improve future processing efforts. For example, the searching of data was
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`“accomplished by individuals directing a search effort by submitting key words or
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`phrases to be compared to those key words or phrases contained in the content or
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`description of that information resource, with indices and contents residing in a
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`fixed location unchanging except by human input.” Ex. 1001 at 1:22-28. As the
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`’536 patent notes, this “static” information model was limited, because, inter alia,
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`the information being processed did not evolve to reflect its actual utility to the
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`people using it, and successful search strategies were not available to be used to
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`5
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`process future searches. Ex. 1001 at 1:37-2:48. At most, the prior art allowed
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`“hits” for a given web page to be tracked—a static process. See Ex. 1001, 2:8-13.
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`The invention solved this problem through the use of “dynamic” information
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`containers. The dynamic information containers include dynamic registers that
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`attach to and form part of the container. Ex. 1001 at 2:66-3:5. Each container has
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`an information element (e.g., an advertisement, article, or a text string), a plurality
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`of registers, and a gateway. The plurality of registers for each container include
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`(i) a unique identification register for that container; (ii) a second register
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`governing the interactions of the container according to utility of the information in
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`the information element relative to space or time; (iii) an active register controlling
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`whether the container acts upon other containers according at a given time or
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`location; (iv) a passive register controlling whether the container can be acted upon
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`by other containers at a given time or location; and (v) a neutral register controlling
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`whether a container may interact with other containers at a given time or location.
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`“Gateways” are programmed with rules to enable the interaction among the various
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`containers, gateways, and system components. Id. at 4:54-5:11.
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`In the invention of the ’536 patent, information containers are populated
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`with information elements and time- and space-based dynamic registers, thereby
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`facilitating access to the information at appropriate times and in relation to
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`pertinent locations. This facilitates access to information that is useful to the user.
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`6
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`As users access the information containers, the dynamic registers are updated with
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`information regarding their use, allowing them to evolve. This is made more
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`evident in the claims of U.S. Patent 6,702,682, whose underlying application is a
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`continuation of the application leading to the ’536 patent. In the ’2,682 patent, “a
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`search query may be run against a plurality of container registers encapsulated and
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`logically defined in a plurality of containers to identify one or more container
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`registers responsive to the search query,” and “a list characterizing the identified
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`containers may be provided.” See U.S. Patent 6,702,682 at Abstract. The dynamic
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`nature of the invention of the ’536 patent is also evident in its other continuation,
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`U.S. Patent No. 7,873,682. The ’3,682 patent is directed to methods and systems
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`using at least two information containers with dynamic registers to evolve
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`information containers over time.
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`Independent claim 1 of the ’536 patent is directed to “an apparatus for
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`transmitting, receiving and manipulating information on a computer system”
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`comprised of a plurality of dynamic containers, each having an information
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`element, a plurality of registers, and a gateway. The plurality of registers for each
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`container include the five types of registers discussed above.
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`Claim 2, also an independent claim, is identical to claim 1, except that
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`“space” and “three-dimensional space” replace “time” and “event time” in the
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`second register. Claim 2 is not at issue in this proceeding.
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`7
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`Claims 3-14 are multiply dependent from claims 1 and 2. These claims
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`further comprise at least one “container history register” (claim 3); “system history
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`register” (claim 4); “predefined register” (claim 5); “user-created register” (claim
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`6);”system-defined register” (claim 7); “acquire register for controlling whether the
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`container adds a register from other containers or adds a container from other
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`containers when interacting with them” (claim 8); OR an apparatus wherein the
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`gateway includes “means for acting upon another container” (claim 9); “means for
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`allowing interaction (claim 10); “means for gathering information,” (claim 11);
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`means for reporting information (claim 12); or “an expert system” (claim 13); OR
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`an apparatus wherein the “information element is one from the group of text,
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`graphic images, video, audio, a digital pattern, a process, a nested container, bit,
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`natural number and a system” (claim 14).
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`Claims 15 and 16 of the ’536 patent are each directed to “an apparatus for
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`transmitting, receiving and manipulating information on a computer system”
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`comprised of a plurality of dynamic containers, each having an information
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`element, a plurality of registers, and a gateway. The plurality of registers for each
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`container includes (i) a unique identification register for that container, (ii) a
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`second register designating time (claim 15) or space (claim 16) governing the
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`interactions of the container according to utility of the information in the
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`information element relative to event time (claim 15) or three-dimensional space
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`8
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`(claim 16), and (iii) at least one acquire register controlling whether the container
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`adds a register or container from another container.
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`As with claims 1 and 2, claims 15 and 16 differ only with respect to each
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`claim’s second register. Claim 15 recites a second register “having a
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`representation designating time and governing interactions of the container with
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`other containers, systems or processes according to utility of information in the
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`information element relative to an external‐to‐the‐apparatus event time.” Claim
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`16, which is not at issue in this proceeding, recites a second register designating
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`“space” and governing interactions of “the container” of which it is part
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`“according to the utility of the information in the information element relative to
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`three-dimensional space.”
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`II. Overview of the Asserted Prior Art
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`The petition for IPR2014-0083 relies upon two references:
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`• Anderson et al., U.S. Patent No. 5,684,471 (Ex. 1005) (“Dussell”);
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`and
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`• Dussell et al., U.S. Patent No. 5,938,721 (Ex. 1006) (“Dussell”).
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`The Petition asserts that Anderson anticipates claims 2-14 and 16, and
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`makes claims 2, 4-8, 13, and 16 obvious in view of “general knowledge.” The
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`Petition also asserts that Dussell anticipates claims 2-14, and 16. Both references
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`9
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`
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`are directed to systems that use a GPS database in conjunction with a mobile
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`device.
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`Anderson
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`Anderson discloses a “Field Navigation System,” a “location system for use
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`in a vehicle moving within a selected area at a selected speed while moving in a
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`selected direction.” Ex. 1005 at 3:37-40. The location system includes heading
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`and speed sensors. Id. at 1:40-48. A storage device stores the “initial position
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`data” and “checkpoint data.” Id. at 3:15-48. A database (within the vehicle’s
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`location system) stores records with geographic information. Id. at 3:48-50. The
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`internal database uses the positions calculated by the “position computer” to
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`determine when certain actions should be taken. Id. at 7:30-45.
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`There is no two-way communication with an outside network. The unit
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`includes a GPS receiver, but this is just a receiver that monitors satellite signals
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`and triangulates position based on those signal’s travel times. Id. at 4:32-35. The
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`location computer generates a “position signal” that is cross-indexed to the “task
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`GIS unit” database that is installed within the unit. Id. at 8:21-59.
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`Anderson does not disclose an apparatus with a “plurality of containers.” In
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`fact, Anderson does not disclose even one “container” comprising “an information
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`element . . ., a first register having a unique container identification value, a
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`10
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`second register. . . governing interactions of the container according to the utility
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`of information in the information element . . . , and a gateway.”
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`Dussell
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`Dussell discloses a “Position Based Personal Digital Assistant.” Task
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`descriptions are stored a database accessible on a “personal digital assistant”
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`(“PDA”). Ex. 1006, at Abstract. The PDA receives “positioning information
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`corresponding to its current location” (e.g., GPS data). Id. The PDA correlates the
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`task descriptions with locations via a geographic coordinate (“geocode”) index.
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`See Ex. 1006 at 7:13-32; 8:27-44. As the user enters locations that have one or
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`more task records associated with them, the system presents task reminders to the
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`user.
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`Dussell does not disclose an apparatus with a “plurality of containers” or “a
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`first register having a unique container identification value.”
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`III. The Petition Should Be Denied.
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`The Petition should be rejected for four independent reasons. First, the
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`Petition fails to explain the relevance of the prior art to the claims as required by
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`37 C.F.R. § 104(b)(5), including failing to establish that the prior art discloses all
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`elements “arranged as in the claims.” Second, the Petition is deficient because it
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`violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against incorporating other
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`11
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`
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`arguments by reference. Third, the Petition relies on prior art that is cumulative of
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`prior art raised in another pending petition filed by Petitioner, as well as with prior
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`art considered during the prosecution of the underlying application. Finally, even
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`setting aside these critical defects, the Petition should be rejected on the merits,
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`because it fails to demonstrate a reasonable likelihood of any claims being
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`invalid—particularly because it relies on unreasonably broad constructions for and
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`fails to construe terms that are material to all of the claims at issue. For at least
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`these reasons, the Petition does not show a reasonable likelihood of prevailing with
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`respect to any of the challenged claims, and inter partes review should not be
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`instituted.
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`A. The Petition Fails To Explain the Relevance Of The References
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`To The Claims As Required By 37 C.F.R. § 104(b)(5)
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`37 C.F.R. § 104(b)(5) states (emphasis added): “the petition must set forth:
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`. . . (5) The exhibit number of the supporting evidence relied upon to support the
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of the evidence that support the challenge. The
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`Board may exclude or give no weight to the evidence where a party has failed to
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`state its relevance or to identify specific portions of the evidence that support the
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`challenge.” In addition, in order to invalidate a claim, a prior art reference “must
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`not only disclose all elements of the claim within the four corners of the document,
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`12
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`but must also disclose those elements ‘arranged as in the claim.’” See MPEP 2131;
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`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Failure
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`to satisfy these requirements is grounds to dismiss an IPR petition in its entirety.
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`See, e.g., Synopsis, Inc. v. Mentor Graphics Corp., IPR 2012-0041, Dkt. No. 16,
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`12-13 (PTAB 2013) (declining to institute IPR due to petitioner’s failure to
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`establish that elements were “arranged as in the claim”).
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`The Petition fails to mention, let alone satisfy, these requirements. For
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`example, the Petition provides no explanation of how Anderson and Dussell show
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`each and every element “arranged as required by the claim,” as required for a
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`proper anticipation rejection. See id. Instead, the Petition consists of a series of
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`conclusory statements that various elements of the claims are present in the
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`asserted prior art. There is little or no explanation in the Petition of specifically
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`how the claim terms are being applied by the Petitioner or why the highlighted
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`language corresponds to (or is otherwise relevant to) the claim elements. Even the
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`Declaration of Henry Houh (Ex. 1003), upon which the Petition is based, contains
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`many conclusory statements that elements are met, but fails to provide the
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`explanation required by the PTO’s regulations.1
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`1 The supporting declaration of Apple’s expert also repeatedly omits the “arranged
`as required by the claim” requirement for anticipation. See Ex. 1003 at ¶ 28
`(representing that § 102 is satisfied because “every element” is present, without
`addressing how the elements are arranged).
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`13
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`A prime example of the Petition’s failure to explain how the cited references
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`meet the limitations is the Petition’s assertion that Anderson and Dussell each
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`disclose a “first register for storing a unique container identification value.” For
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`both Anderson (Ex. 1005) and Dussell (Ex. 1006), the Petition asserts that the
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`“geocode” or “location index” associated with a database record for a given
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`location is “a unique container identification value.” In both cases, this statement
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`is made without citing any specific language from the asserted prior art. If one
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`follows the citations from the Petition to the supporting declaration to the actual
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`reference, it becomes apparent that neither reference gives any indication that the
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`“location index” or “geocode” is “unique.” In fact, it is entirely possible to have a
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`database of geographic locations in which a given “location index” or “geocode”
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`corresponds to two or more entries.
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`Further, in both petitions, a single regiser (i.e., the “location index” or
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`“geocode”) is asserted as satisfying four or five elements of the claimed apparatus.
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`For example, with respect to Anderson, the Petition asserts that the “location
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`coordinates” of the object in the field embodies the “information element,” (ii) the
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`first register having a unique container identification value, and (iii) all four
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`“space” registers (i.e., the “second register” and “active,” “passive,” and “neutral”
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`registers). See Petition at 15-19. The Petition similarly asserts that the single
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`“geocode” value associated with the database records in Dussell satisfies all of
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`14
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`these limitations. Because these arguments conflate the “information element,”
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`“first register having a unique container identification value,” and the “second
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`register . . . governing interactions of the container,” this argument reads the
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`second register as controlling interactions with itself, which is either nonsensical
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`and/or tautological. Moreover, the specification clearly states that, within a
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`container, the “content” (i.e., “information element”) and registers must be
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`independent of each other. See Ex. 1001 at 13:1-3 (“Registers 120 are unique in
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`that they operate independently of the encapsulated contents . . .”). To the extent
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`the Petition presents these arguments without explaining why a single register
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`embodies five distinct elements, including one which is supposed to be controlled
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`by the other, the Petition fails to meet its burden.
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`Accordingly, the Petition fails to satisfy § 104(b)(5)’s requirement that “the
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`Petition must set forth . . . the relevance of the evidence to the challenge raised.”
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`The failures cited above with regard to the “first register having a unique container
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`identification value,” “information element,” and “second register representing
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`space and governing interactions of the container . . . according to utility of
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`information in the information element” are not the only examples of such
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`deficiencies.
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`15
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`B.
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`The Petition Violates Rule 42.6 By Incorporating the Substance of
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`Its Arguments by Reference
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`Rule 42.24 of the PTAB’s Rules for Trial Practice limits petitions for inter
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`partes review to 60 pages. The PTO adopted this page limit after substantial
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`public commentary, in an attempt to reduce the burden of petitions for review on
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`the PTAB and patent owners. To ensure that Petitioners adhere to this page limit,
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`the PTO explicitly prohibits incorporation of arguments by reference. See 37
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`C.F.R. 42.6(a)(3) (“Arguments must not be incorporated by reference from one
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`document into another document.”) (emphasis added); see also Rules of Practice
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`for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent
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`Trial and Appeal Board Decisions (“Rules of Practice”), Fed. Reg. 77, No. 157, p.
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`48617 (noting that, under § 42.6, petitions are subject to Fed. R. App. Proc. 32,
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`which prohibits incorporation by reference). As the PTO explained:
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`incorporation by reference
`The prohibition against
`minimizes the chance that an argument would be
`overlooked and eliminates abuses
`that arise from
`In DeSilva
`incorporation
`and
`combination.
`v.
`DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999), the
`court rejected ‘‘adoption by reference’’ as a self-help
`increase in the length of the brief and noted that
`incorporation is a pointless imposition on the court’s time
`as it requires the judges to play archeologist with the
`record. The same rationale applies to Board proceedings.
`Cf. Globespanvirata, Inc. v. Tex. Instruments, Inc., 2005
`WL 3077915, *1 (D. N.J. 2005) (Defendants provided
`cursory statements in motion and sought to make its case
`through incorporation of expert declaration and a claim
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`16
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`
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`chart. Incorporation by reference of argument not in
`motion was held to be a violation of local rules governing
`page limitations and was not permitted by the court). . . .
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`The PTO noted that that Board applied page limits to both arguments and findings
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`of fact because the failure to do so resulted in “abuses of the system.” Fed. Reg.
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`77 at 48620. The PTO noted that patent cases before the PTAB are no exception to
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`the standards of district courts, where motion practice does not require federal
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`judges to “shovel through steaming mounds of pleonastic arguments in Herculean
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`effort to uncover a hidden gem of logic.” Id.
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`Despite this prohibition on incorporation by reference, the Petition
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`incorporates at least 67 pages of the 98-page supporting declaration by reference.
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`The Petition itself never directly cites either of the two asserted prior art
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`references. Instead, it cites the supporting declaration, which then often cites other
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`portions of itself before finally citing actual language from the underlying patents.
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`This is particularly inexcusable given that the Petition had only nine pages of space
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`to use.
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`The Petitioner’s failure to abide by the regulations is not merely technical; it
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`directly impacts the substance of the issues in the Petition. The Petition’s use of
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`incorporation by reference enabled the Petitioner to assert conclusions without
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`having to show that the underlying references actually make the asserted
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`disclosures.
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`17
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`
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`By moving all actual evidence into the 67 pages of discussion in the
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`declaration, the Petition disguises its leaps in logic and mischaracterizations. See
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`Petition at 16 (incorporating a summary of Ex. 1005 by reference to Ex. 1003 , ¶¶
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`70-96.) and 38 (incorporating a summary of Ex. 1006 by reference to Ex. 1003 , ¶¶
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`198-205.). For example, the Petition’s blithe reference to “location indexes” and
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`“geocodes” as “unique container identification values” glosses over the fact that
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`neither Anderson nor Dussell ever state that the databases they disclose can only
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`have one record per location. Compare Petition at 40 (alleging that each “run” by
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`a vehicle in Anderson’s system creates “unique index” based on position and is
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`thus a “unique container identification value,” citing Ex. 1003, ¶¶ 112-113) with
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`Ex. 1003, ¶¶ 112-113 (asserting that records in Anderson have “unique position
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`values,” citing Ex. 1003, ¶ 85) and id., ¶ 85 (citing Ex. 1005 at 1:31-35 (“An index
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`into the GIS database is formed based on the farm implement position within a
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`specified location. The indexed application rate is retrieved from the GIS database
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`and is used to instruct the implement to apply the prescribed application rate to the
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`field.”); Petition at 40 (alleging Dussell’s “geocodes” correspond to “a unique
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`physical location” and are thus “unique container identification values” based on
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`Ex. 1003, ¶¶ 200-202) with Ex. 1003, ¶¶ 200-202 (quoting excerpts from Dussell
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`that establish location records include geocodes, without ever indicating such
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`geocodes are unique). Even if the Petition were relying on inherent anticipation to
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`18
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`establish that because each location has a record, that location is a “unique
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`container identification value,” it would be required to prove that this was
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`necessarily true, which it is not (because a location could have more than one
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`record).
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`When the reader reviews the cited references, it is apparent that the Petition
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`chose not to cite the asserted prior art directly because the prior art does not
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`describe the asserted functionality. The actual text of Anderson and Dussell never
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`mention unique container identification values, and never indicate that location
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`records are unique. The Petition’s statements that Anderson and Dussell each
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`disclose an apparatus with this element are false, as are its assertion that these non-
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`existent disclosures establish disclosure of the “first register” of claims 2-14 and
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`16.
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`These are exactly the kinds of abuses that § 42.6’s prohibition against
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`incorporating by reference was designed to prevent. Walking the PTAB through
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`every Byzantine argument presented by Petitioner would require parsing over 67
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`pages of Ex. 1003 and the Petition, which would exceed the page limit for this
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`Preliminary Response. The Petition itself is only 51 pages, but it never once
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`presents a direct quotation of any evidence in the asserted prior art. Instead, the
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`Petition presents all the actual disclosures of the prior art in Ex. 1003. The
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`overwhelming bulk of Petitioner’s argument—even more than the nine pages that
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`19
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`
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`Petitioner had left at its disposal—is in the underlying declaration and incorporated
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`by reference. This creates an unreasonable amount of work for the PTO, is unfair
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`to the Patent Owner, and violates § 42.6 of the PTAB’s Rules of Practice for inter
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`partes review proceedings. In light of this violation by Petitioner, the Petition
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`should be denied.
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`C. The Prior Art Raised in the Petition is Cumulative with Prior Art
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`Asserted by the Petitioner in Another Petition.
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`The prior art asserted in this case is cumulative with the prior art asserted by
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`the same Petitioner in the petition for inter partes review in case No. 2014-0086.
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`The prior art asserted in Petition No. 2014-0086, U.S. Patent No. 5,836,529
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`(“Gibbs”) is directed to an “Object Based Railroad Transportation Network
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`Management System and Method.” The references asserted in the current petition
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`(Anderson and Dussel) are asserted as anticipatory based on their disclosure of
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`location-based databases that interact with devices in the real world based on
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`location. The Gibbs patent similarly discloses the use of an object-oriented
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`database in combination with external devices (e.g., railroad cars, stations, and
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`cargo).
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`The basic functionality disclosed by the prior art asserted in this petition is
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`identical to the basic functionality disclosed by Gibbs, at least insofar as it is
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`material to the ’536 patent. In both petitions, the Petitioner, Apple Inc., essentially
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`20
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`
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`contends that (i) any software file is a container (location records in Anderson and
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`Dussel; location, crew, and locomotive objects in Gibbs), (ii) any location-based
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`software action satisfies all four space-based limitations in claims 2-14 and 16, and
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`(iii) any process that adds anything to any file proves the existence of an “acquire
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`register.” In petition 0085, Petitioner contends that Anderson and Dussell
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`anticipate claims 2-14 and 16. In petition 0087, Petitioner contends that Gibbs
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`anticipates these claims. In essence, the two petitions are identical in their
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`allegations.
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`Patent Owner submits that it is inefficient to initiate two proceedings to
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`answer the question of whether prior art that discloses location-based databases
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`interacting with objects in the real world invalidates claims 2-14 and 16 of the ’536
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`patent. Accordingly, Patent Owner submits that even if the PTO decides that the
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`Petitioner has carried their burden of showing a reasonable likelihood of prevailing
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`on at least one claim in both petitions (Nos. 2014-0085 and 2014-0087), it would
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`be within the PTO’s discretion to choose one petition on which to proceed and
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`deny the other.
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`21
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`
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`D.
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` There Is No Reasonable Likelihood of the Claims Being
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`Invalidated.
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`1.
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`The Petitioner Fails to Construe and/or Incorrectly
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`Construes Terms Material to all Claims.
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`The initial step in an analysis of whether to institute a trial is to determine
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`the meaning of the claims. Consistent with the statute and the legislative history of
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`the AIA, the Board interprets claims using the broadest reasonable construction in
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`light of the specification in which they appear. See Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 CFR § 42.100(b). Claim
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`terms are also given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire disclosure.
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`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). There is a
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`“heavy presumption” that a claim term carries its ordinary and customary meaning.
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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`“Plain meaning” refers to the ordinary and customary meaning the term would
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`have to a person of ordinary skill in the art. Such terms require no construction.
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`See, e.g., Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp,
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`Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in non-construction of
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`“melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380
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`22
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`
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`(Fed. Cir. 2001) (finding no error in court’s refusal to construe “irrigating” and
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`“frictional heat”).
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`A patentee may act as his own lexicographer by redefining the meaning of
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`particular claim terms away from their ordinary meaning, by clearly expressing
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`that intent in the written description. See Merck & Co., Inc. v. Teva
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`Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005). If an inventor acts
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`as his or her own lexicographer, the definition must be set forth in the specification
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`with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs
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`Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
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`The Petition urges the Board to utilize two additional rules in construing the
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`claims, neither of which has any support in the law. First, Petitioner asserts that
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`the “[t]he broadest reasonable construction should reflect subject matter that Patent
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`Owner contends lit
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