throbber
IPR2014-00199
`U.S. Patent 6,771,970
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`___________________
`
`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`___________________
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`
`
`
`
`

`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`Page(s)
`
`TABLE OF CONTENTS
`
`
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`STATEMENT OF PRECISE RELIEF REQUESTED .................................. 2
`II.
`III. THE RELIEF REQUESTED SHOULD BE GRANTED .............................. 2
`The Board Misapprehended or Overlooked The Intrinsic
`A.
`Evidence For Construing The Claimed “Map Database” .................... 2
`The Board Misapprehended or Overlooked The Intrinsic
`Evidence For Construing The Claimed “Map Engine For
`Manipulating Said Map Database” ...................................................... 4
`The Board Misapprehended or Overlooked The Legal Standard
`For Admissible Expert Testimony Regarding Invalidity ..................... 8
`IV. CONCLUSION ............................................................................................. 12
`
`
`B.
`
`C.
`
`
`
`i
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`
`

`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`CASES
`Morpho Detection, Inc. v. Smiths Detection, Inc.,
`No. 211cv498, 2012 U.S. Dist. LEXIS 170561
`(E.D. Va. Nov. 30, 2012) ............................................................................ 8, 9, 10
`
`Page(s)
`
`
`Mytee Prods. v. Harris Research, Inc.,
`439 F. App’x 882 (Fed. Cir. 2011) ....................................................................... 9
`
`SEB S.A. v. Montgomery Ward & Co.,
`594 F.3d 1360 (Fed. Cir. 2010) ............................................................................ 9
`
`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ...................................................................... 8, 10
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`FRE 702 ................................................................................................................... 10
`
`
`
`ii
`
`
`

`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`INTRODUCTION
`
`
`
`I.
`
`LocatioNet Systems, Ltd. (“Patent Owner”) respectfully requests rehearing
`
`under 37 C.F.R. § 42.71(d) of the Patent Trial and Appeal Board’s (“Board’s”)
`
`May 7, 2015 Final Written Decision (Paper 56; “Final Decision”) as to claim 18 of
`
`United States Patent No. 6,771,970 (“the ’970 Patent”; Ex. 1001). This request for
`
`rehearing is filed within 30 days of the entry of final decision.
`
`In its Final Decision, the Board found claim 18 of the ’970 Patent
`
`unpatentable on the ground of anticipation over Elliot (Ex. 1003). In so finding,
`
`the Board misapprehended or overlooked the intrinsic evidence supporting the
`
`proper construction for the claim terms “map database” and “map engine for
`
`manipulating said map database.” Moreover, the Board misapprehended or
`
`overlooked the evidentiary standard for admissible expert testimony regarding
`
`issues of invalidity, the substance and disclosure of the prior art, or how a person
`
`of ordinary skill in the art would understand the prior art under the Federal Rules
`
`of Evidence and well-established case law. Petitioner relied solely on the
`
`inadmissible testimony of its declarant, Dr. Rosenberg, to support its attorney
`
`arguments; therefore, Petitioner failed to carry its burden to prove that the
`
`teachings of Elliot anticipate claim 18. Accordingly, Patent Owner respectfully
`
`requests that the Board revisit the arguments tendered by both Petitioner and Patent
`
`Owner, and conclude that claim 18 is not anticipated by Elliot.
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`#31810749 v2
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`

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`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Patent Owner respectfully requests that the Board reconsider its Final
`
`
`II.
`
`Decision and hold that Petitioner has failed to establish that claim 18 of the ’970
`
`Patent is unpatentable.
`
`III. THE RELIEF REQUESTED SHOULD BE GRANTED
`A. The Board Misapprehended or Overlooked The Intrinsic
`Evidence For Construing The Claimed “Map Database”
`
`The Final Decision states:
`
`Turning to the intrinsic evidence, the ’970 Patent
`Specification utilizes the term “map database” in the
`following contexts: (a) “maps stored in the database
`(5),” (b) “a map from said at least one map database,” (c)
`“[t]he map database may include maps formatted as at
`least one of the following: Raster Map in various scales,
`vector maps and air photo,” (d) “[a] map database (5) in
`formats such as Raster, Vector, Topographic or aerial
`photographs;” and (e) “accessing a map database (5).”
`Ex. 1001, col. 2, ll. 32, 46-48, col. 4, ll. 15-17, col. ll. 3-
`6.
`
`See Final Decision at 7-8. It appears that the Final Decision focused on select
`
`passages from the ’970 Patent Specification describing what is contained in a “map
`
`database” rather than what a “map database” is or what a “map database” does.
`
`Based on this evidence, the Board found that “the broadest reasonable construction
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`#31810749 v2
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`in light of the ’970 Patent Specification for ‘map database’ is an organized
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`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`collection of map data that can be accessed.” Id. at 8. However, the Final
`
`Decision misapprehended or overlooked copious intrinsic evidence that renders the
`
`Board’s construction of “map database” overly broad and unreasonable under the
`
`pertinent legal standard.
`
`Claim 18 requires, among other things, that: “each one of said mobile
`
`platform location systems being associated with a map database and map engine
`
`for manipulating said map database.” See Ex. 1001 at 8:59-61. The Final
`
`Decision misapprehended or overlooked the ’970 Patent’s disclosure of numerous
`
`functions performed using the claimed “map database,” including supplying “street
`
`names derived from map databases” (Ex. 1001 at 5:45-50), “correlating between
`
`maps stored in the database (5)” (id. at 4:15-20), “the step of correlating the
`
`location of each remote platform with a map database” (id. at 3:21-25), “access
`
`said map database for correlating map to said location information, so as to
`
`obtain correlated location information” (id. at 9:1-3). Paper 35 (PO Response) at
`
`10-11; Paper 44 (PO’s Motion for Observations Re Cross-Exam) at 11-13; see also
`
`Paper 55 (Hearing Tr.) at 14:8-24, 19:14-19.
`
`Indeed, these functions of the claimed map database, i.e., deriving street
`
`names from map databases, correlating between maps stored in the map database,
`
`correlating the location of each remote platform with a map database, and
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`#31810749 v2
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`
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`accessing the map database for correlating the map to location information, are
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`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`what define the claimed “map database.” Id. By broadly defining the claimed
`
`“map database” as “an organized collection of map data that can be accessed”
`
`without regard to the expressly described “database” functionality, any storage
`
`device containing map data would constitute the claimed “map database.” See
`
`Paper 55 at 14:1-4. To be sure, the ability to access map data does not define the
`
`claimed “map database.” The extensive intrinsic evidence describing the
`
`functionality of the “map database”—overlooked by the Final Decision—
`
`demonstrates that the Board’s construction is overly broad and unreasonable.
`
`Thus, under a proper claim construction based on the entire intrinsic record,
`
`Petitioner has failed to show that claim 18 is unpatentable; therefore Patent Owner
`
`respectfully requests that Board’s Final Decision be reversed.
`
`B.
`
`The Board Misapprehended or Overlooked The Intrinsic
`Evidence For Construing The Claimed “Map Engine For
`Manipulating Said Map Database”
`Claim 18 also requires a “map engine for manipulating said map database.”
`
`Citing to the provisional application of the ’970 Patent, the Final Decision states:
`
`Specifically, the ’643 Application discloses the
`interaction of the map engine and map database in the
`following contexts: (1) “[e]ach of the specified
`Company Devices ((41) to (44)) [(i.e., mobile platform
`location systems)] is associated with a map database (not
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`#31810749 v2
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`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`shown) and a known per se map engine for accessing
`the map database …;” and (2) “[t]he latter [(i.e., unit
`41)] correlates the so received location data with the
`desired map (as defined in input (63)) as extracted from
`the map database using its integrated map engine.”
`
`Final Decision at 10 (emphasis in original). Based on this disclosure, the Final
`
`Decision concludes: “The disclosure in the ’643 Application of the map engine
`
`accessing the map database, and extracting a map from the map database, is
`
`consistent with, and complementary to, the ’970 Patent Specification disclosure of
`
`the map engine accessing the map database, and obtaining a map from the map
`
`database.” Id. But this excerpted disclosure from the ’643 Application does not
`
`support and is in fact contrary to the Board’s construction because it
`
`misapprehends or overlooks the described functionality of the “map engine.” Final
`
`Decision at 10-11 and n.2. When viewed in its full context, the ’643 Application
`
`explains that the “integrated map engine” operating on the Company Device (41) is
`
`not only used to extract a map from the map database, but is also used to correlate
`
`the location data with the desired map stored in the map database. Id.
`
`First, the ’643 Application states that each of the Company Devices (41) to
`
`(44) is capable of correlating between maps and positioning information: “Each of
`
`the specified Company Devices ((41) to (44)) is associated with a map database
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`#31810749 v2
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`5
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`

`
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`(not shown) and a known per se map engine for accessing the map database and is
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`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`capable of correlating between maps and the positioning information received
`
`from the vehicle’s tracking unit...” Ex. 1002 at p. 4, lines 1-4 (emphasis added). It
`
`further discloses that: “The latter [i.e., Company Device (41)] correlates the so
`
`received location data with the desired map (as defined in input (63)) as extracted
`
`from the map database using its integrated map engine. The location data
`
`incorporated in the map is forwarded through channel (72) to ILS module (46).”
`
`Ex. 1002 at p. 5, lines 4-7 (emphasis added); Final Decision at 10. It is clear that
`
`the verb of the sentence (i.e., correlates) is performed by the Company Device (41)
`
`using its [Company Device (41)’s] integrated map engine. Id. Indeed, the ’643
`
`Application explains that the Company Device (41) operates an integrated map
`
`engine that it uses to correlate the location data with the desired map. Id. Thus,
`
`there can be no dispute that the “map engine” is used to “correlate” the location
`
`data with the desired map. This teaching is consistent with the ’970 Patent
`
`Specification and the express language of claim 18.
`
`Second, the ’970 Patent Specification describes an embodiment where the
`
`“location determination system (1) is also linked to a map server (4) operating a
`
`map engine for accessing a map database (5). The map server (4) is capable of
`
`correlating between maps stored in the database (5) and positioning information
`
`received from the respective location tracking systems (11-14).” Ex. 1001 at 4:15-
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`#31810749 v2
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`6
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`

`
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`20 (emphasis added); Paper 35 at 4 and 7-8; Paper 44 at 11-13; Final Decision at
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`10. In this embodiment, the map server (4)—as opposed to the Company Device
`
`(41) described in the ’643 Application—operates the map engine that it uses to
`
`correlate between maps stored in the map database and positioning information
`
`received from the location tracking systems. Id.
`
`Third, the language of claim 18 is likewise consistent with the disclosure in
`
`the ’643 Application and the ’970 Patent Specification. Claim 18 requires “each
`
`one of said mobile platform location systems being associated with a map database
`
`and map engine for manipulating said map database.” Ex. 1001 at 8:59-61,
`
`claim 18; Paper 35 at 8-9, 13-14. It further requires that: [t]he at least one mobile
`
`platform location system being adapted to receive said mobile platform location
`
`information and access said map database for correlating map to said location
`
`information, so as to obtain correlated location information…” Ex. 1001 at
`
`8:66-9:3; Paper 35 at 13-14; Paper 44 at 11-13. It is also clear from the plain
`
`language of claim 18 that the claimed mobile platform location system is
`
`associated with a “map engine for manipulating said map database” to access the
`
`map database for correlating a map with location information to obtain correlated
`
`location information. Id. As such, based on the intrinsic evidence, the claimed
`
`“map engine for manipulating said map database” must require more
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`#31810749 v2
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`7
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`

`
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`functionality (e.g., correlating a map with location information) than merely
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`accessing a map database or obtaining a map from the map database.
`
`Thus, the Board’s construction of “map engine for manipulating said map
`
`database” as an element or component for accessing the map database or obtaining
`
`or extracting map data from the map database misapprehends or overlooks the
`
`intrinsic evidence set forth in the ’643 Application, the ’970 Patent Specification,
`
`and the language of claim 18 itself; and thus, is overbroad and unreasonable.
`
`C. The Board Misapprehended or Overlooked The Legal Standard
`For Admissible Expert Testimony Regarding Invalidity
`
`The Final Decision states:
`
`Patent Owner does not direct us to binding authority
`sufficient to support its argument that in order for expert
`testimony to be admissible, the expert must be a person
`of ordinary skill in the art.
`
`Final Decision at 19. However, under the Federal Rules of Evidence and Federal
`
`Circuit law, a declarant who is not qualified as a person of ordinary skill in the art
`
`cannot testify as to issues of invalidity, the substance and disclosure of the prior
`
`art, or how a person of ordinary skill in the art would understand the prior art.
`
`The Board misapprehended or overlooked the case law cited in Patent
`
`Owner’s Motion to Exclude, specifically Sundance, Inc. v. DeMonte Fabricating
`
`Ltd., 550 F.3d 1356, 1364 (Fed. Cir. 2008) (“With regard to invalidity, for
`
`#31810749 v2
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`

`
`
`example, a witness not qualified in the pertinent art may not testify as an expert as
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`to anticipation, or any underlying questions, such as the nature of the claimed
`
`invention, what a prior art reference discloses, or whether the asserted claims read
`
`on the prior art reference.”) (emphasis added) and Morpho Detection, Inc. v.
`
`Smiths Detection, Inc., No. 211cv498, 2012 U.S. Dist. LEXIS 170561, at *5-7
`
`(E.D. Va. Nov. 30, 2012) (citing Sundance, 550 F.3d at 1363) (granting motion to
`
`exclude testimony of expert that did not meet the requirements set forth in the
`
`definition of a person of ordinary skill in the art on the issues of invalidity, the
`
`substance and disclosure of the prior art, and how a person of ordinary skill in the
`
`art would understand the prior art). Paper 43 (PO’s Motion to Exclude) at 2-5;
`
`Paper 51 (PO’s Reply Re Motion to Exclude) at 1-2; Paper 55 at 29:3-30-14.
`
`The case law cited in the Final Decision is inapposite. In SEB S.A. v.
`
`Montgomery Ward & Co., 594 F.3d 1360 (Fed. Cir. 2010), the opinion testimony
`
`offered did not relate to any issue of invalidity or the prior art. Final Decision at
`
`19. And, in Mytee Prods. v. Harris Research, Inc., 439 F. App’x 882, 887 (Fed.
`
`Cir. 2011) (non-precedential), the level of ordinary skill in the art was proffered to
`
`be that of “an ordinary layman with average intelligence.” Id. at 20. Thus, the law
`
`is clear: only a witness qualified as a person of ordinary skill in the art can testify
`
`as to anticipation, the nature of the claimed invention, what a prior art reference
`
`discloses, or whether the asserted claim reads on the prior art reference. Id.
`
`#31810749 v2
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`

`
`Even though Petitioner provided no evidence to demonstrate how Dr.
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`
`
`Rosenberg qualifies as a person of ordinary skill in the art under any definition—
`
`including Petitioner’s own definition, the Final Decision states: “We are also
`
`persuaded by Petitioner’s arguments that Dr. Rosenberg’s experience is adequate
`
`to establish his technical expertise.” Final Decision at 20. The Board’s finding is
`
`erroneous and misapprehends or overlooks the law. Some level of technical
`
`expertise that can qualify a declarant as an expert in technical subject matter under
`
`FRE 702 does not qualify him to proffer opinions regarding invalidity, including
`
`the substance and disclosure of the prior art, or how a person of ordinary skill in
`
`the art would understand the prior art. See Sundance 550 F.3d at 1364; Morpho
`
`Detection, 2012 U.S. Dist. LEXIS 170561, at *6-7 (holding that an expert that is
`
`not qualified as one of ordinary skill in the art cannot testify with respect to
`
`invalidity, but may testify “generally as an expert in the science of adsorption and
`
`adsorption processes”); Paper 51 at 2-3; Paper 55 at 29:3-30:14.
`
`The Final Decision’s reference to Dr. Rosenberg’s work experience relating
`
`to “location tracking applications” does not constitute the requisite experience of
`
`one of ordinary skill in the art in the field of the ‘970 Patent. Final Decision at 20.
`
`Petitioner proffered a definition of a person having ordinary skill in the art in
`
`Exhibit 1013 – a declaration submitted by Petitioner’s first expert, Dr. Hotes: “In
`
`the field of the alleged invention of the ‘970 Patent, a person of ordinary skill in
`
`#31810749 v2
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`10
`
`

`
`
`the art has a bachelor of science degree in computer science, electrical engineering,
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`physics, mathematics or a comparable degree and at least three years of experience
`
`working with client-server systems, networking technologies and applications, data
`
`translations systems, and wireless and Internet communications protocols.”
`
`Petitioner’s subsequent reliance on a different expert (Dr. Rosenberg) does
`
`not allow it to repudiate its earlier definition of the skilled artisan. Petitioner did
`
`not proffer Exhibit 1020, Dr. Rosenberg’s declaration, for anything other than that
`
`which he is not qualified to do: provide opinions on the issue of anticipation, the
`
`substance and disclosure of Elliot, and how a person of ordinary skill in the art
`
`would understand Elliot. Paper 51 at 4; Paper 55 at 29:24-30:14. Indeed, Dr.
`
`Rosenberg admits: “I have been asked to provide my opinions regarding whether
`
`the claims of the ’970 Patent would have been anticipated, in light of the Elliot
`
`reference.” Ex. 1020 at 5, ¶ 10; Paper 51 at 2-3. In this proceeding, Petitioner’s
`
`attorney arguments are premised solely on the inadmissible opinions of Dr.
`
`Rosenberg regarding invalidity, as illustrated by the Final Decision. See Final
`
`Decision at 2, 15 (citing Ex. 1020 ¶¶ 12-26), and 17 (citing Ex. 1020 ¶¶ 32-34);
`
`Paper 51 at 1-5. Thus, the opinions contained in Dr. Rosenberg’s declaration,
`
`Exhibit 1020, should be properly excluded under the law.
`
`Because the Final Decision cites to and relies on Dr. Rosenberg’s
`
`inadmissible opinions, it should be modified and reversed. Petitioner has failed to
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`#31810749 v2
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`11
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`

`
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`carry its burden to prove that claim 18 of the ’970 Patent is anticipated by Elliot.
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`reconsider its Final Decision and find that Petitioner has failed to establish by a
`
`preponderance of the evidence that claim 18 of the ’970 Patent is unpatentable.
`
`
`
`Dated: June 5, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`#31810749 v2
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`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 5th day of June, 2015, a true and correct copy of
`
`the foregoing Patent Owner’s Motion for Rehearing Pursuant to 37 C.F.R. §
`
`42.71(d) was served on the following counsel for Petitioner Wavemarket, Inc.
`
`d/b/a Location Labs via email:
`
`
`
`
`mark.hogge@dentons.com
`scott.cummings@dentons.com
`
`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`
`Mark L. Hogge
`Scott W. Cummings
`Dentons US LLP
`1301 K Street, N.W., Suite 600
`Washington DC 20005
`Tel: (202)408-6400
`Fax: (202)408-6399
`
`Dated: June 5, 2015
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`
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`13

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