Trials@uspto.gov
`571-272-7822
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`Paper 9
`Entered: April 25, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Corrected Petitioner,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00085
`Patent 7,010,536
`
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON,
`BRIAN J. McNAMARA, NEIL T. POWELL,
`and GREGG I. ANDERSON Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Entered: April 25, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Corrected Petitioner,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00085
`Patent 7,010,536
`
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON,
`BRIAN J. McNAMARA, NEIL T. POWELL,
`and GREGG I. ANDERSON Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2014-00085
`Patent 7,010,536
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`
`I. INTRODUCTION
`On October 23, 2013, Apple Inc. (“Apple” or “Petitioner”) filed a
`Corrected Petition for Inter Partes Review of claims 2-16 of U.S. Patent No.
`7,010,536 (Ex. 1001, “the ’536 Patent”)1. Paper 3 (“Corrected Pet.”). On
`January 29, 2014, Evolutionary Intelligence, LLC (“Evolutionary
`Intelligence” or “Patent Owner”), filed a preliminary response. Paper 7
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the Corrected Petition and preliminary
`response, we determine that the information presented in the Corrected
`Petition does not establish that there is a reasonable likelihood that Petitioner
`would prevail in showing unpatentability of any of the challenged claims.
`Accordingly, pursuant to 35 U.S.C. § 314, we do not institute an inter partes
`review of the ’536 Patent.
`A. Related Proceedings
`Corrected Petitioner states that on October 23, 2012, it was served
`with a complaint alleging infringement of the ’536 Patent in Civil Action
`
`
`1 Petitioner initially filed a Corrected Petition intended for a different inter
`partes review on October 22, 2013 and corrected the error on October 23,
`2013. The Corrected Petition has been accorded a filing date of October 23,
`2013.
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`No. 6:12-cv-00783-LED in the Eastern District of Texas, which was
`transferred to the Northern District of California as Civil Action No. 3:13-
`cv-4201-WHA. Corrected Pet. 4. The ʼ536 patent is also the subject of
`several other lawsuits against third parties. Id. at 5.
`B. The ’536 Patent
`The ’536 patent is directed towards developing intelligence in a
`computer or digital network by creating and manipulating information
`containers with dynamic interactive registers in a computer network. Ex.
`1001, 1:11-20; 3:1-5. The system includes an input device, an output
`device, a processor, a memory unit, a data storage device, and a means of
`communicating with other computers. Id. at 3:6-11. The memory unit
`includes an information container made interactive with, among other
`elements, dynamic registers, a search engine, gateways, a data collection and
`reporting means, an analysis engine, and an executing engine. Id. at
`3:15-23.
`The ’536 patent describes a container as an interactive nestable logical
`domain, including dynamic interactive evolving registers, and which
`maintains a unique network-wide lifelong identity. Id. at 3:29-35. A
`container, at minimum, includes a logically encapsulated portion of
`cyberspace, a register, and a gateway. Id. at 9:2-4. Registers determine the
`interaction of that container with other containers, system components,
`system gateways, events, and processes on the computer network. Id. at
`3:43-46. Container registers may be values alone or contain code to
`establish certain parameters in interaction with other containers or gateways.
`Id. at 9:19-22. Gateways are structurally integrated into each container or
`strategically placed at container transit points. Id. at 4:54-57. Gateways
`
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`govern the interaction of containers encapsulated within their domain by
`reading and storing register information of containers entering and exiting
`that container. Id. at 4:58-66; 15:46-49.
`The system for creating and manipulating information containers is
`set forth in Figure 2B as follows:
`
`
`Figure 2B illustrates a computer network showing nested containers,
`computer servers, and gateways at Site 1 through Site 7. Id. at 10:59-62.
`Any of Sites 1 through 7 may interact dynamically within the system; for
`example, Site 1 shows a single workstation with a container and gateway
`connected to an Intranet. Id. at 10:64-67. Site 2 shows a server with a
`gateway in relationship to various containers. Id. at 11:2-3. Site 3 shows an
`Internet web page with a container residing on it. Id. at 11:3-4. Site 4 shows
`a personal computer with containers and a gateway connected to the
`Internet. Id. at 11:4-6. Site 5 shows a configuration of multiple servers and
`containers on a Wide Area Network. Id. at 11:6-7. Site 6 shows a work
`station with a gateway and containers within a container connected to a
`Wide Area Network. Id. at 11:7-9. Site 7 shows an independent gateway,
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`capable of acting as a data collection and data reporting site as it gathers data
`from the registers of transiting containers, and as an agent of the execution
`engine as it alters the registers of transient containers. Id. at 11:8-13.
`An example of the configuration the containers may have is provided
`in Figure 4 as follows:
`
`
`Figure 4 shows an example of container 100 that includes
`containerized elements 01, registers 120, and gateway 200. Ex. 1001, 12:65-
`67. Registers 120 included in container 100 include, inter alia, active time
`register 102000, passive time register 103000, neutral time register 104000,
`active space register 111000, passive space register 112000, neutral space
`register 113000, and acquire register 123000. Id. at 14:31-39.
`
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`C. Illustrative Claim
`Claims 2 and 16 are the two independent claims challenged. Claim 2
`is reproduced below:
`2. An apparatus for transmitting, receiving and
`manipulating information on a computer system, the apparatus
`including a plurality of containers, each container being a
`logically defined data enclosure and comprising:
`
`an information element having information;
`
` a
`
` plurality of registers, the plurality of registers forming
`part of the container and including
`
`
`a first register for storing a unique container
`identification value,
`
` a
`
` second register having a representation
`designating space and governing interactions of the
`container with other containers, systems or processes
`according to utility of information in the information
`element relative to an external-to-the-apparatus three
`dimensional space,
`
`an active space register for identifying space in
`which the container will act upon other containers,
`processes, systems or gateways,
`
`
`a passive resister for identifying space, in which
`the container can be acted upon by other containers,
`processes, systems, or gateways,
`
`
`a neutral space register for identifying space in
`which the container may interact with other containers,
`processes, systems, or gateways; and
`
` a
`
` gateway attached to and forming part of the container,
`the gateway controlling the interaction of the container with
`other containers, systems, or processes.
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`D. Prior Art Relied Upon
`Corrected Petitioner relies upon the following prior art references:
`Reference
`Description
`Filing Date
`Exhibit
`Anderson
`US 5,684,476
`Dec. 30, 1993
`Ex. 1005
`Dussell
`US 5,938,721
`Oct. 24, 1996
`Ex. 1006
`
`
`
`
`E.
`The Alleged Grounds of Unpatentability
`Corrected Petitioner alleges the following grounds of unpatentability:
`Claims
`Grounds
`Reference[s]
`2-14 and 16
`35 U.S.C. § 102(e)
`Anderson
`
`
`
`2, 4-8, 13 and 16
`2-14 and 16
`
`35 U.S.C. § 103(a)
`35 U.S.C. § 102(e)
`
`II. ANALYSIS
`
`Anderson
`Dussell
`
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012). The terms also are given their ordinary and customary meaning as
`would be understood by one of ordinary skill in the art in the context of the
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
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`1. “container”
`Independent claims 2 and 16 recite the term “container,” as do various
`dependent claims, e.g., claims 5 and 7. As discussed above, the ʼ536 patent
`specification describes a container as an interactive nestable logical domain,
`including dynamic interactive evolving registers, and which maintains a
`unique network-wide lifelong identity. Ex. 1001, 3:29-35. Petitioner cites
`to the ’536 patent specification explaining that a “container” is “a logically
`defined data enclosure which encapsulates any element or digital segment
`(text, graphic, photograph, audio, video, or other), or set of digital segments,
`or referring now to FIG. 3C, any system component or process, or other
`containers or sets of containers.” Corrected Pet. 8-9 (citing Ex. 1001, 8:64-
`9:2). Petitioner then argues that the broadest reasonable interpretation of
`“container” is “a logically defined data structure that contains a whole or
`partial digital element (e.g., text, graphic, photograph, audio, video, or
`other), or set of digital segments, or any system component or process, or
`other containers or sets of containers.” Id. at 9 (citing Ex. 1003, ¶¶ 54-55).
`Patent Owner proposes that the broadest reasonable construction of
`“container” is “a logically defined data enclosure which encapsulates any
`element or digital segment (text, graphic, photographic, audio, video, or
`other), or set of digital elements.” Prelim. Resp. 25.
`Patent Owner, however, argues that defining “container” as something
`that “contains,” as Petitioner proposes, is circular and unhelpful. Prelim.
`Resp. 26. Further, Patent Owner argues Petitioner’s proposed construction
`ignores the relationship between “containers” and “encapsulation.” Id.
`Patent Owner also argues “encapsulation” refers to “treat[ing] a collection of
`structured information as a whole without affecting or taking notice of its
`
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`internal structure” and “encapsulated” further refers “to the process of
`wrapping data in protocols that allow its transmission from one network to
`another, as occurs when a web page is sent using HTML.” Id. (citing Ex.
`2001).
`We are not persuaded by Patent Owner’s arguments. The ’536 patent
`discloses that a container “at minimum includes in its construction a
`logically encapsulated portion of cyberspace, a register and a gateway” and a
`container “at minimum encapsulates a single digital bit, a single natural
`number or the logical description of another container, and at maximum all
`defined cyberspace, existing, growing and to be discovered, including but
`not limited to all containers, defined and to be defined in cyberspace.” Ex.
`1001, 9:2-9. The ’536 patent does not limit the terms “logically defined” or
`“encapsulated” to “structured information as a whole” regardless of its
`internal structure or “wrapping data” in preparation for transmission. The
`claims also do not require such limitations. Accordingly, we do not agree
`with Patent Owner that “logically defined” or “encapsulated” require
`anything more than “contained within.”2
`Accordingly, based on the proposed construction of “container” by
`both Petitioner and Patent Owner, and for the purposes of this decision, we
`construe “container” to mean “a logically defined data enclosure which
`encapsulates any element or digital segment (text, graphic, photograph,
`audio, video, or other), or set of digital elements.”
`
`2 Related U.S. Patent No. 7,702,682 B2, the patent at issue in IPR2014-
`00079 and IPR2014-00080, recites the terms “logically defined” and/or
`“encapsulated” in independent claims 1 and 19-23. Our interpretation of
`these terms is consistent with our analysis in IPR2014-00079 and IPR2014-
`00080.
`
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`2. “register”
`Independent claims 2 and 16 recite “a plurality of registers, the
`plurality of registers forming part of the container.” Petitioner proposes that
`the plain meaning of “register” is “value and/or code associated with a
`container” based on the context of “register” in the ʼ536 patent specification,
`where container registers “may be values alone or contain code to establish
`certain parameters in interaction with other containers 100 or gateways 200.”
`
`Corrected Pet. 9-10 (citing Ex. 1001, 9:19‐23).
`
`Patent Owner argues that the term “register” encompasses “a group of
`(usually) bistable devices that are used to store information within a
`computer system for high speed access” and “a memory location within a
`microprocessor, used to store values and external memory addresses while
`the microprocessor performs logical and arithmetic operations on them.”
`Prelim. Resp. 27 (citing Exs. 2002, 2003). Based on these dictionary
`definitions, Patent Owner proposes that “register” means “a memory
`location within a computer that stores data.” Id. at 28. Patent Owner
`acknowledges that its proposed construction is similar to Petitioner’s
`construction, but argues that Petitioner’s construction is unreasonably broad
`and may encompass unpatentable subject matter. Id. at 28.
`We disagree with Patent Owner. Specifically, we do not agree with
`Patent Owner that “register” must require “a memory location within a
`computer.” The ’536 patent specification and claims do not impose such a
`limit to the meaning of “register.” The ’536 patent describes “container
`registers” as follows:
`Container registers 120 are interactive dynamic values appended to
`the logical enclosure of an information container 100, and serve to
`govern the interaction of that container 100 with other containers 100,
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`container gateways 200 and the system 10, and to record the historical
`interaction of that container 100 on the system 10. Container registers
`120 may be values alone or contain code to establish certain
`parameters in interaction with other containers 100 or gateways 200.
`
`Ex. 1001, 9:14-23. We see no reason to limit the scope of “register” to
`include limitations neither described by the specification nor required by the
`claims. Therefore, we are persuaded by Petitioner’s argument that the
`broadest reasonable construction of “register,” as it is used in the ʼ536 patent
`is “value or code associated with a container.”
`B. The Declaration of Dr. Houh in the Corrected Petition
`The Petition for inter partes review filed on October 22, 2013 (Paper
`1, “Pet.”) was identical to the Petition in IPR2013-000086. The sole
`challenge to patentability in the Petition filed on October 22, 2013 was that
`claims are unpatentable under 35 U.S.C. § 102(e) based on US 5,836,529, to
`Gibbs filed October 31, 1995. Pet. 8-30.3 The Petition filed on October 22,
`2013, cites the Declaration of Henry Houh (Ex. 1003). Dr. Houh’s
`declaration is limited to a discussion of Gibbs, and contains no discussion or
`analysis of any other prior art.
`On October 23, 2013, Petitioner filed a Corrected Petition. The
`Corrected Petition challenges the patentability of claims 2-14 and 16 based
`on Anderson, Dussell, and general knowledge in the field. Corrected Pet. 8-
`51. Dr. Houh’s declaration is Exhibit 1003 to the Petition and the Corrected
`Petition and does not address either Anderson or Dussell. Ex. 1003 ¶¶ 66-
`194.
`
`3 The Corrected Petition does not include page numbers. We have assigned
`page numbers beginning with page 1 at heading I.A. and concluding with
`page 31 at heading V. The assigned page numbers appear to correspond to
`page numbers in the Table of Contents.
`
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`In Captioncall, LLC v. Ultratec, Inc., IPR2013-00544, slip op. at 14-
`15 (PTAB March 5, 2014)(Paper 6), the Board held that the information
`presented in the petition, even without an expert declaration, established a
`reasonable likelihood that Petitioner would prevail on the asserted grounds
`of unpatentability. Similarly, in this case, we analyze the Corrected Petition
`to determine if the arguments made regarding the references are sufficient to
`establish a reasonable likelihood that Petitioner will prevail on the asserted
`grounds on at least one claim of the ʼ536 patent.
`For reasons detailed below, we are not persuaded that Petitioner has
`shown that it is reasonably likely to prevail with respect to at least one of the
`claims. 37 C.F.R. § 42.20(c). A petition “must specify where each element
`of the claim is found in the prior art patents or printed publications relied
`upon[,]” and it “must include . . . a detailed explanation of the significance
`of the evidence including material facts[.]” 37 C.F.R. § 42.104(b)(4); 37
`C.F.R. § 42.22(a). “The Board may exclude or give no weight to the
`evidence where a party has failed to state its relevance or to identify specific
`portions of the evidence that support the challenge.” 37 C.F.R.
`§ 42.104(b)(5).
`C. Anticipation by Anderson
`The Corrected Petition directs us to the declaration of Dr. Houh for a
`summary of Anderson (Ex. 1005). Corrected Pet. 15 (citing Ex. 1003 ¶¶ 70-
`96). Dr. Hough does not address Anderson.
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`Overview of Anderson
`Anderson discloses a location system for a farm implement traveling
`in an agricultural field. Ex. 1005, 4:9-18. The location system provides a
`real-time farm implement position indication so that data from a location
`indexed database can be used to control the vehicle’s actions. Id. The
`database includes a geographical information system (GIS) which stores a
`map of the area in which the vehicle will operate. Id. at 8:1-4. The GIS
`database also stores information such as weed maps, soil attributes, soil test
`results, pest infestation, climate, terrain, hydrography, agricultural chemical
`needs, and previous yields to a fine resolution. Id. at 8:23-38. This data is
`used to regulate location-specific application of agricultural chemicals and
`seed. Id.
`Figure 1 of Anderson is reproduced below.
`
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`As shown in Figure 1, global positioning system (GPS) receiver 20 is also
`mounted on the vehicle. Ex. 1005, 4:43-49. GPS receiver 20 derives speed
`information, representing the current speed of the vehicle, and provides a
`GPS speed signal on line 22, representative of the current speed of the
`vehicle to position computer 18 via communication link 23. Id. The
`position computer automatically detects operator moves varying from a
`heading established by the flux compass, and the operator is directed on a
`planned path through the field. Id. at 11:37-40.
`Claims 2-14 and 16
`Claim 2 recites in the preamble “[A]n apparatus for transmitting,
`receiving and manipulating information on a computer system, the apparatus
`including a plurality of containers, each container being a logically defined
`data enclosure.”4
`Petitioner’s general statements about Anderson do not specify what in
`Anderson actually discloses the claimed “container.” Corrected Pet. 15-16.
`Petitioner’s references to paragraphs 97-103 of the declaration of Dr. Houh,
`which discuss Gibbs, are not relevant to Anderson. Neither the Corrected
`Petition nor Dr. Houh’s declaration specifically identifies what portion of
`Anderson arguably meets the container limitation, or any other limitation of
`claim 2.
`Patent Owner argues the Corrected Petition does not show how the
`container limitation is met by Anderson. Prelim. Resp. 35. Patent Owner
`contends the Corrected Petition:
`
`4 The preamble forms an antecedent basis for “containers” as used in the
`claims and will be given weight. See, Eaton Corp. v. Rockwell Int'l Corp.,
`323 F.3d 1332, 1339 (Fed. Cir. 2003).
`
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`cites various disclosures of Anderson (e.g., vehicles, sensors, a GIS
`database), but never identifies exactly which of these is “the
`container” to which all the other elements of the claim are tied.
`Corrected Petition at 15-16. Although the Corrected Petition
`references “data structures, such as the GIS database,” the Corrected
`Petition fails to establish that Anderson discloses an apparatus with a
`“plurality” of GIS databases as required by the claims. See id.
`
`
`Id.
`
`We agree that Petitioner has failed to state Anderson’s relevance or to
`identify specific portions of Anderson that support the challenge. 37 C.F.R.
`§ 42.104(b)(5). Even if the GIS database is arguably a container, which
`seems to be the closest disclosure of Anderson to the container limitation,
`there is only one GIS database and not the plurality required by the claims at
`issue.
`
`The Corrected Petition generally does not cite specifically to any
`disclosure in Anderson for any of the limitations of claim 2. Absent such
`specificity, Petitioner has not established it is likely to prevail in
`demonstrating the unpatentability of claim 2.
`Claim 16 recites the same “container” limitation, and Petitioner relies
`on the same evidence. Corrected Pet. 29. For the same reasons discussed
`above, Petitioner has not shown it is reasonably likely to prevail in
`demonstrating that claim 16 is anticipated by Anderson. Claims 3-14
`depend from claim 2 and necessarily require the same container limitation,
`which Petitioner has not shown is present in Anderson.
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`For the reasons discussed above, we are not persuaded that Petitioner
`has shown a reasonable likelihood that any of claims 2-14 and 16 would be
`unpatentable as anticipated by Anderson.
`C. Obviousness over Anderson
`Petitioner relies on the same evidence as discussed in connection with
`its anticipation contentions as to claims 2, 4-8, 13 and 16. Corrected Pet. 30.
`For the reasons discussed above, Petitioner has not shown a reasonable
`likelihood of demonstrating that any of claims 2, 4-8, 13 and 16 is
`unpatentable as obvious over Anderson.
`D. Anticipation by Dussell
`The Corrected Petition directs us to the declaration of Dr. Houh for a
`summary of Dussell (Ex. 1006). Corrected Pet. 38 (citing Ex. 1003 ¶¶ 198-
`221). Dr. Houh’s declaration ends at paragraph 195 and does not address
`Dussell. See Ex. 1003.
`
`Overview of Dussell
`Dussell describes a computer assisted method of scheduling tasks.
`Ex. 1006 at 1:58-59. A task description is stored in a database accessible by
`a mobile computer system. Id. at Abstract. The mobile computer system
`receives positioning information corresponding to its geographic location
`and indexes the database based on the positioning information when the
`information indicates that the mobile computer system is in a geographic
`location that facilitates completion of a task associated with the task
`description. Id.
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`Figure 1 of Dussell is reproduced below.
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`
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`Figure 1 shows digital system 5 having database 10, mobile computer
`system 20 and location determination unit 30. Ex. 1006 at 3:27-29. The
`database may be a separate database maintained at some location remote
`from the mobile computer system or it may be a local database maintained
`within mobile computer system. Id. at 3:29-32. The location determination
`unit may be a Global Positioning System (GPS) receiver or other unit
`capable of determining a geographic location of accompanying antenna 32.
`Id. at 3:36-39.
`
`Claims 2-14 and 16
`Petitioner argues that Dussell discloses a database that contains
`records containing task descriptions and other information. Corrected Pet.
`38-39 (citing to non-existent paragraphs 198-205 in declaration of Dr.
`Houh). “Each of these records, along with the database itself, is a logically
`
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`defined data enclosure.” Id. at 39. After discussing the location device and
`the receipt of location information by the database, Petitioner asserts that Ex.
`1006 thus discloses the claimed apparatus, including a plurality of
`containers. Id.
`Patent Owner asserts that when discussing the “plurality of
`containers” or “the container,” the Corrected Petition “generically
`references ‘records.’” Prelim. Resp. 40-41. Patent Owner further contends:
`the Petition never identifies exactly which “records” in Dussell it is
`reading the “container” limitation onto. Id. The reason is, simply,
`that Dussell never identifies any database structures onto which to
`read these limitations. Dussell discloses the general concept of
`coupling a geographic database to a personal device assistant (PDA)
`with a geographic coordinate (“geocode”) index – nothing more. See
`Ex. 1006 at 7:13-32 (describing adding the geographic index onto
`prior art “to-do” software for PDAs). As such, it cannot, and does
`not, disclose any structure that corresponds to the “container” of claim
`2.
`
`
`Id.
`
`Petitioner also relies on the records of Dussell generally to meet the
`plurality of registers” limitation of claim 2. “Ex. 1006 [Dussell] describes a
`database containing many records which themselves contain information on
`task descriptions and the corresponding locations associated with those task
`descriptions. Ex. 1003 ¶¶ 198-204, 217-219.”5 Corrected Pet. 40. The
`same disclosure of Dussell cannot be used to meet separate elements of the
`same claim. See Becton Dickinson and Co.v. Tyco Healthcare Group LP,
`616 F.3d 1249, 1254 (Fed. Cir. 2010) (noting where a claim lists elements
`separately, “the clear implication of the claim language” is that those
`
`5 As previously noted, the Houh declaration ends at paragraph 195. The
`paragraphs cited by Petitioner do not exist in the record before us.
`
`18
`
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`
`Case IPR2014-00085
`Patent 7,010,536
`
`elements are “distinct components” of the patented invention) (internal
`citations omitted).
`The records relied on to meet both the “container” and “plurality of
`registers” limitations have not been sufficiently identified in Dussell. Even
`assuming the records of Dussell upon which Petitioner relies for each
`limitation are different; Petitioner has not cited to the subject matter in
`Dussell that explains what the records are, so that a determination can be
`made as to whether the limitations are sufficiently described.
`The Corrected Petition does not cite to any specific disclosure in
`Dussell that meets the limitations of claim 2. As previously stated, this is, in
`part, a result of reliance on the deficient declaration of Dr. Houh.
`Regardless of the reason, absent such specificity, Petitioner has not met its
`burden.
`Petitioner has not established a reasonable likelihood that claim 2 is
`unpatentable. Claim 16 has the same “container” and “plurality of registers”
`limitations as claim 2, and Petitioner relies on the same evidence. Corrected
`Pet. 50. For the same reasons previously discussed, Petitioner has not
`shown it is reasonably likely to prevail in demonstrating anticipation of
`claim 16 by Dussell. Claims 3-14 depend from claim 2 and necessarily
`require the same container limitation, which is lacking from Dussell.
`Therefore, Petitioner has not shown a reasonable likelihood that any
`of claims 2-14 and 16 would be unpatentable as anticipated by Dussell.
`III. CONCLUSION
`For the foregoing reasons, we are not persuaded that the information
`presented in the Corrected Petition establishes a reasonable likelihood that
`
`
`
`
`19
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`Case IPR2014-00085
`Patent 7,010,536
`
`Petitioner would prevail in establishing the unpatentability of any challenged
`claim of the ’536 Patent.
`
`ORDER
`
`Accordingly, it is
`ORDERED the Corrected Petition for inter partes review based on
`Petitioner’s challenges to the patentability of claims 2-14 and 16 of the ’536
`Patent is denied.
`
`For PETITIONER:
`
`Jeffrey P. Kushan
`Douglas I. Lewis
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`dilewis@sidley.com
`
`
`
`For PATENT OWNER:
`
`Anthony Patek
`Todd Kennedy
`pto@gutridesafier.com
`todd@gutridesafier.com
`
`
`
`
`
`
`
`20
`
`
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