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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SkyHawke Technologies, LLC
`Petitioner
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`v.
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`L&H Concepts, LLC
`Patent Owner
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`Case IPR2014-00438
`Patent 5,779,566
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`PATENT OWNER L&H CONCEPTS, LLC’S
`PRELIMINARY RESPONSE
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`Case IPR2014-00438
`Attorney Docket No: 30912-0003IP2
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`TABLE OF CONTENTS
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`Introduction ........................................................................................................ 1
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`I.
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`II. Statement of Relief Requested ........................................................................... 3
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`III. Claim Construction ............................................................................................ 3
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`A. The Preambles Are Limitations ............................................................... 4
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`B. Additional Terms Proposed By Petitioner ............................................... 7
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`IV. The Petition Fails to Establish that the Cited Art Practices Claims 1 and
`13 ........................................................................................................................ 8
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`A. Petitioner Asserts that Claims 1 and 13 are Indefinite ............................ 8
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`B. Petitioner Fails to Identify a Prior Art Structure that Meets Its
`“Generic Structure” for the “Key Entry Means” of Claim 1 ................. 11
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`C. Petitioner Fails to Identify a Prior Art Structure that Meets Its
`“Generic Structure” for the “Means for Displaying” in Claim 13 ........ 13
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`V. The Board Should Not Institute Petitioner’s Redundant Challenges .............. 15
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`A. The Board’s Precedent Requires Petitioner to Distinguish
`Between Otherwise Redundant Prior Art References ........................... 16
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`B. Petitioner’s Statement of Non-Redundancy Establishes that the
`Ultra Golf Reference is the Stronger Ground ........................................ 17
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`C. Petitioner is Correct that the Palmer-Based Challenges Do Not
`Disclose the Claimed Information Screens ............................................ 19
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`D. The Challenges to Claim 17 are Doubly Redundant ............................. 20
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`VI. Conclusion ........................................................................................................ 21
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`i
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`Case IPR2014-00438
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`LIST OF EXHIBITS1
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`2002
`2003
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`2004
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`2005
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`2006
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`2007
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`Exhibit No. Description
`Berk-Tek LLC v. Belden Technologies Inc., IPR2013-00057 (Paper
`2001
`21, May 14, 2013)
`In re Morris, 127 F.3d 1048 (Fed. Cir. 1997)
`NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir.
`2005)
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801
`(Fed. Cir. 2002)
`Novatek, Inc. v. Sollami Co., No. 2013-1389, 2014 U.S. App.
`LEXIS 5512 (Fed. Cir. Mar. 26, 2014)
`ʼ566 patent prosecution history, May 27, 1997 Office Action
`Response
`Blackberry Corporation, et a., v. Mobilemedia Ideas, LLC,
`IPR2013-00036, (Paper 65, Mar. 7, 2014)
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2013-00152, (Paper 8, Aug. 19, 2013)
`Sony Corp v. Yissum Research Development Co. of the Hebrew
`Univ. of Jerusalem, IPR2013-00219 (Paper 33, Nov. 21, 2013)
`Liberty Mutual Ins. Co. v. Progressive Casualty Co., CBM2012-
`00003 (Paper 7, Oct. 25, 2012)
`Oracle Corp. v. Patent of Clouding IP, LLC, IPR2013-00075
`(Paper 15, June 13, 2013)
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`2008
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`2009
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`2010
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`2011
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`1 Consistent with 37 C.F.R. §§ 42.6(c)-(d), none of these cited exhibits are already
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`in the record.
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`ii
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`Case IPR2014-00438
`Attorney Docket No: 30912-0003IP2
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`Pursuant to 37 C.F.R. § 42.107(a), the patent owner, L&H Concepts, LLC
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`(“L&H” or “Patent Owner”), hereby submits the following Preliminary Response
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`in response to the Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
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`5,779,566 (“the ʼ566 patent”) numbered IPR2014-00438 (the “00438 Petition”),
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`filed by SkyHawke Technologies, LLC (“SkyHawke” or “Petitioner”).
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`I.
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`INTRODUCTION
` Inter partes review is a forum—much like the original examination—
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`where the PTO can consider the best and most comprehensive prior art and
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`determine whether or not the claims are allowable. Instituting inter partes review
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`on “multiple grounds without meaningful distinction by the petitioner is contrary to
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`the legislative intent [of the AIA].” Berk-Tek LLC v. Belden Technologies Inc.,
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`IPR2013-00057 (Paper 21, May 14, 2013), Ex. 2001 at 5.
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`Petitioner is seeking (at least) a double review of the claims of the ’566
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`patent, with only conclusory language to support its assertion of non-redundancy.
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`Petitioner reasonably could have limited its challenge of the claims of the ’566
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`patent to a single petition2 but chose not to, instead using twice the pages and twice
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`(and, for one claim, thrice) the reference combinations in hopes of invalidating
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`2 IPR2014-00437 also addresses claims of the ’566 patent based on the same
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`references.
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`1
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`claims which have already been recognized as valid
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`through ex parte
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`reexamination.
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`Given that the Patent Owner is unable to present new evidence in the
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`Preliminary Response context, Patent Owner focuses this response on addressing
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`defects in the Petition and addressing the redundancies in the Petition that will
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`make any eventual proceeding less efficient for the parties and the Board.3 First, as
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`described below, the Petition fundamentally fails with regard to claims 1-5 and 13
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`because (1) Petitioner asserts that the claims are indefinite, and (2) the cited
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`references do not meet the claim construction proposed by Petitioner. Thus, even
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`if one were to accept the Petition as wholly correct in its assertions, the references
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`cited fail.
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`Next, with regard to the remaining claim 17, if the Board chooses to
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`institute, the challenge based on the combination of the Palmer and Vanden Heuvel
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`references
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`is needlessly redundant, as even Petitioner concedes
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`that
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`the
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`combination of Palmer and Vanden Heuvel is less complete (and thus inferior) to
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`3 No adverse inference should be drawn from Patent Owner’s discussion of the
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`comparative strength of the base references with regard to institution of this IPR.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764, § II-C (Aug.
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`14, 2012).
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`2
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`Petitioner’s assertions based on the Ultra Golf reference. Accordingly, to the
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`extent that inter partes review should be considered at all, it should be focused on
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`Ultra Golf combination (the alleged more complete grounds) to enable the most
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`efficient and complete resolution.4
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`II.
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`STATEMENT OF RELIEF REQUESTED
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` For the reasons set forth below, Patent Owner respectfully requests that this
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`Board wholly deny this Petition for IPR of the ’566 with regard to claims 1-5 & 13.
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`If the Board institutes on claim 17, the institution should be limited to the Ultra
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`Golf related grounds (subsection VII(E) of the Petition).
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`III. CLAIM CONSTRUCTION
`The Patent Office’s policy is to give the claims of a duly granted patent in a
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`review proceeding their “broadest reasonable interpretation.”5 Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012). It is important to
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`note that such an interpretation must be reasonable; in fact, it must be reasonable in
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`4 This same redundancy holds if the Board elects to institute on claims 1-5 and 13.
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`Any institution should be limited to the Ultra Golf-based challenges in the interest
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`of efficiency.
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`5 The Patent Owner reserves all rights to argue, if necessary, that the broadest
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`reasonable interpretation standard should not be employed during litigation.
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`3
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`light of the relevant intrinsic evidence, including the specification. In that context,
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`the broadest reasonable interpretation of claim language is the “meaning of the
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`words in their ordinary usage as they would be understood by one of ordinary skill
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`in the art, taking into account whatever enlightenment by way of definitions or
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`otherwise that may be afforded by the written description contained in the
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`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997)
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`(Ex. 2002). See M.P.E.P. 2111.01 (“The Words of A Claim Must Be Given Their
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`“Plain Meaning” Unless Such Meaning Is Inconsistent With The Specification”).
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`The Petition sets forth two general categories of claim construction
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`arguments: one broadly arguing that the preambles are not limitations, and the
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`other arguing that certain claim terms should be interpreted as “means plus
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`function” claims under 35 U.S.C. § 112(f).
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`A. The Preambles Are Limitations
`The Petition fails to provide any analysis to support its assertion that the
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`preambles of claims 1, 13, and 17 are not limiting. A preamble is generally
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`construed to be limiting if it “recites essential structure or steps, or if it is necessary
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`to give life, meaning, and vitality to the claim.” NTP, Inc. v. Research In Motion,
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`Ltd., 418 F.3d 1282, 1305 (Fed. Cir. 2005) (Ex. 2003) (quoting Catalina Mktg.
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`Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (Ex.
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`2004)). For example, preambles may also be found limiting if the specification
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`underscores as important structures or steps recited in the preamble. Catalina
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`Mktg., 289 F.3d at 808. Whether a preamble is treated as a limitation is determined
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`by the facts of each case and upon an understanding of what the inventors actually
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`invented and intended to encompass by the claims. Catalina Mktg., 289 F.3d at
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`808.
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`The preambles in claims 1, 13, and 17 are limiting, because they give life to
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`the meaning of the claims. These preambles define the structure of the apparatus
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`recited in the body of the claims as relating to an apparatus for recording and
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`reporting data from real-world events. For example, each of claims 1, 13, and 17
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`recites “information screens,” and each claim’s preamble defines that this structure
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`is limited to “golf information” (claims 1 and 17) or “sports and game information”
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`(claim 13). Additionally, claim 17’s preamble further defines the structure by
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`limiting the apparatus to a “handheld portable apparatus.”
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`These preambles are also limiting because the ʼ566 patent defines,
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`throughout, that the “invention” is directed to the sports like the game of golf. See
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`Novatek, Inc. v. Sollami Co., No. 2013-1389, 2014 U.S. App. LEXIS 5512, at *10
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`(Fed. Cir. Mar. 26, 2014) (preamble may be limiting when the “specifications
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`identify the recited structural elements in the patents’ preambles as “the
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`invention”) (Ex. 2005). For example, the ʼ566 patent establishes that the invention
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`is related to golf or sports, where it is desirable to record and report data relating to
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`the event in order to increase a player’s proficiency:
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`The inventive handheld reporting unit and method of
`operation is of course not limited to the game of golf, as
`those skilled in the art will be able to adapt the invention
`to almost any sport or game for which it is desirable to
`record and report a large amount of data. Golf is the
`game for which the invention is best suited, but not the
`only game to which it can be applied.
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`ʼ566 patent at 16:47-53 (emphasis added); see also ʼ566 patent at 1:8-10 (“Field of
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`the Invention: The present invention is related to an apparatus and method for
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`reporting and recording golf information”); id. at 2:19-22 (“Summary of the
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`Invention: “The present invention is a greatly improved handheld computer unit for
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`recording and reporting sports information, for example golf information”).
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`These preambles are also limiting because the patent applicant stressed
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`during prosecution that the patent is directed to golf and sports. Compare Catalina
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`Mktg., 289 F.3d at 808-09 (“clear reliance on the preamble during prosecution to
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`distinguish the claimed invention from prior art transforms the preamble into a
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`claim limitation because such reliance indicates use of the preamble to define, in
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`part, the claimed invention”). For example, during prosecution the applicant
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`stated:
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`While applicant has amended claims 1, 15 and 19 to
`clarify the claimed key means, applicant notes that these
`claims are distinguishable on the basis of the keys’
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`function in the context of the claimed environment (i.e., a
`golf information reporting apparatus). For example, as
`noted above, each of claims 1, 15 and 19 requires the key
`entry means to operate in complementary fashion with a
`golf
`information
`screens with
`number
`of
`screen/dependent data input fields; the Examiner has yet
`to find an example of a golf information recording
`apparatus with screen/dependent data input fields, which
`allows the use of the simplified key entry means in
`conjunction with multiple different information screens.
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`ʼ566 patent prosecution history, May 27, 1997 Office Action Response at 17-18
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`(underlining in original, bolded emphasis added), Ex. 2006; see also id. at 18 (“a
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`kwerty keyboard bears no relevance to - applicant’s golf information reporting
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`invention”) (emphasis in original).
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`B. Additional Terms Proposed By Petitioner
`With regard to the additional 15 terms proposed for construction by
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`Petitioner, Petitioner’s positions are incorrect but—in the interest of efficiency—
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`Patent Owner reserves its response until the Patent Owner’s Response6—provided
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`such is even necessary.
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`6 Notably, Patent Owner is not permitted to provide an expert declaration along
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`with its Preliminary Response.
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`7
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`IV. THE PETITION FAILS TO ESTABLISH THAT THE CITED ART
`PRACTICES CLAIMS 1 AND 13
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`As described further below, the Petition fails to establish a case of
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`unpatentability for claims 1 and 13, because it fails to provide any citation from the
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`prior art that meets the structural requirements set forth by the Petitioner itself for
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`the “key entry means” of claim 1 or the “means for display” of claim 13. As such,
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`the Petition is fatally defective under its own terms, and the Board should not
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`institute on claim 1, claim 13, or the claims that depend thereon.
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`Petitioner Asserts that Claims 1 and 13 are Indefinite
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`A.
`As an initial point, Petitioner notes that the Petition asserts that both claims 1
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`and 13 (among others) are indefinite. Specifically, the Petition argues that “claims
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`1-3, 13, and 17 of the ʼ566 patent each recite means-plus-function limitations [but]
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`… [n]o specific structure is disclosed in the ʼ566 patent specification.” Petition
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`at 16. The Petition argues that “[f]or computer implemented 112 (f) limitations,
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`the specification structure corresponding to these claimed functions must include
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`the general, but undisclosed, algorithms….” Id.
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`The America Invents Act was not designed to give the Board authority to
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`entertain indefiniteness arguments—this authority was reserved for the judiciary
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`branch. Patent Owner asserts firstly that the Board should hold the Petitioner to its
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`apparent true beliefs regarding the claims and allow the Petitioner to pursue its
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`allegations in district court in the parties’ ongoing litigation. See, e.g., Blackberry
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`Corporation, et a., v. Mobilemedia Ideas, LLC, IPR2013-00036, Paper 65, 20-21
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`(Mar. 7, 2014) (declining to institute when the Petition argued that specification
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`lacked algorithmic structure for means-plus-function claims, observing that
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`“[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary
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`factual inquiry for determining obviousness—ascertaining differences between the
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`claimed subject matter and the prior art.”) (Ex. 2007); see also Universal Remote
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`Control, Inc. v. Universal Electronics, Inc., IPR2013-00152, Paper 8, (Aug. 19,
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`2013) (“we are unable to arrive at an interpretation of the requirements of claim 16
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`due to the lack of disclosed structure corresponding to the recited [means-plus-
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`function claims] ... [therefore,] we conclude that the information presented in the
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`Petition and the Preliminary Response does not show there is a reasonable
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`likelihood that Petitioner would prevail in its challenge of claim 16 in an inter
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`partes review”) (Ex. 2008).
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`While the Petition purports to “set[] forth … the generic functional structure
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`described in the specification that most closely corresponds to each means-plus-
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`function element,” this identification is legally meaningless. See M.P.E.P. 2181
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`(“the broadest reasonable interpretation of a claim limitation that invokes 35
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`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is the structure, material
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`or act described in the specification as performing the entire claimed function and
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`equivalents to the disclosed structure, material or act”). Further highlighting the
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`irrelevance of the alleged “most generic” substitute structure is the fact that the
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`Petition identifies the same “structure” for both claim 1’s “key entry means” and
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`claim 13’s “means for display”—namely, a “mid-1990s era mobile processor.”
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`Here, the Petition has failed in its burden to construe the means claim terms
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`and, therefore, no adequate comparison can be made between these claim terms
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`and the prior art.7 The reason for Petitioner’s lack of a reasonable proposed
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`construction for these 15 terms is clear – Petitioner believes that the claims are
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`indefinite. Given that, it should be held to that assertion – which it is already
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`pursuing in district court.
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`7 The Patent Owner does not agree with the Petitioner’s assertion that the identified
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`claims are means-plus-function claims, or with the “generic” structure identified in
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`the Petition for these terms. However, because indefiniteness arguments are not
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`the province of this tribunal, the Patent Owner reserves its counter-arguments if
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`this issue is raised in the ongoing litigation between the parties. The Patent Owner
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`further reserves the right to counter Petitioner’s indefiniteness arguments and offer
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`proposed claim constructions for these terms should IPR proceedings be instituted.
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`Petitioner Fails to Identify a Prior Art Structure that Meets Its
`“Generic Structure” for the “Key Entry Means” of Claim 1
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`B.
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`Limitation 1b requires a “key entry means for retrieving and selectively
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`displaying the information screens from the memory on the display and for
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`retrieving, selecting, and recording the associated data with each information
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`screen.” As noted above, Petitioner alternatively asserts that this means-plus-
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`function limitation is either indefinite or that its corresponding structure is a “mid-
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`1990s era mobile processor.” Petition at 17. In either event, the challenges to
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`claim 1 should not be instituted.
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`As noted above, if Petitioner stands on its indefiniteness arguments, the
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`challenges to claim 1 should not be instituted. If, however, Petitioner is incorrect
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`on indefiniteness, the challenges to claim 1 should also be denied because the
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`Petition fails to even try to identify a “mid-1990s era mobile processor,” which is
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`the structure asserted by Petitioner itself as required for the “key entry means”
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`limitation.
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`Specifically, in its claim chart for limitation 1b, Petitioner cites to Exhibit
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`1007 at 5:48-6:3 and 8:44-9:38. Petition at 29-30. Neither of these sections,
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`however, makes any mention of a processor, much less a “mid-1990s era mobile
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`processor.” Similarly, neither of the Figures cited in connection with limitation 1b
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`shows a processor. In fact, as the Vanden Heuvel reference (Exhibit 1007) has an
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`original filing date of May 8, 1992, it is not even chronologically possible for it to
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`disclose a mid-1990s era mobile processor—notwithstanding Petitioner’s failure to
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`cite any processor.
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`Similarly, neither of the sections of Petitioner’s expert declaration cited in
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`connection with limitation 1b asserts that the references include a “mid-1990s era
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`mobile processor.” In particular, paragraphs 71-74 make no mention of a
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`processor. And, while paragraph 126 of Petitioner’s expert declaration does cite to
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`Vanden Heuvel’s processor, the expert never asserts that this processor is a “mid-
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`1990’s era mobile processor” and, in fact, concedes that the prior art processor is
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`different than the ’566 patent.8 Exhibit 1012 at ¶126. Regardless, Petitioner’s
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`expert cites no support for this opinion beyond the sections cited by Petitioner
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`(namely 8:44-9:38), none of which even mentions a processor.
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`Likewise, with regard to the challenges based on the Ultra Golf combination,
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`Petitioner’s citation for limitation 1b fails to mention a processor. See Petition at
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`52-53. In fact, Exhibit 1009, which the Petition relies upon exclusively for
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`limitation 1b, does not even include the word “processor.” While Petitioner’s
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`8 While Petitioner’s expert argues that the differences from the Prior Art are
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`“insubstantial,” the Petitioner’s expert fails to identify any of the differences or to
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`explain what makes them insubstantial as opposed to substantial.
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`expert does assert in several places in his declaration that the “Game Boy”
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`included a processor, Petitioner’s expert provides no support from Exhibit 1009 to
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`support this assertion. Even if the expert’s unsupported speculation regarding the
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`Game Boy system were correct, the Petition relies on the publication of Exhibit
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`1009 as a printed publication and is thus limited to the disclosure of the publication
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`itself, which does not support the expert’s opinion.
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`Moreover, as with Vanden Heuvel, Petitioner’s expert never alleges that the
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`speculative processor from the Game Boy is a “mid-1990s era mobile processor”
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`and concedes that even the speculative processor is different in some undisclosed
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`way from the ’566 patent. Exhibit 1012 at ¶127. Lastly, as the Petition asserts that
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`the Game Boy document (Exhibit 1009) was published in 1989, it is also
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`chronologically impossible under the Petitioner’s assertions for this exhibit to
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`disclose a “mid-1990s era mobile processor.”
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`For each of these reasons, Petitioner’s challenges related to the “key entry
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`means” limitation fail, and the Board should not institute challenges to independent
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`claim 1 and the claims that depend therefrom.
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`C.
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`Petitioner Fails to Identify a Prior Art Structure that Meets Its
`“Generic Structure” for the “Means for Displaying” in Claim 13
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`Limitation 13c requires a “means for displaying a pre-game information
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`screen and prompting entry of data which entry of data which defines parameters
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`13
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`of an upcoming game.” As noted above, Petitioner alternatively asserts that this
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`means-plus-function limitation is either indefinite or that its corresponding
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`structure includes a “mid-1990s era mobile processor.” Petition at 20. In either
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`event, the challenges to claim 13 should not be instituted.
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`Because Petitioner’s indefiniteness arguments do not belong in this forum, if
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`the Petitioner stands on its indefiniteness arguments, the challenges to claim 13
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`should be resolved by the district court. If, however, Petitioner is incorrect on
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`indefiniteness, then the challenges to claim 13 should also be denied because the
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`Petition fails to identify a “mid-1990s era mobile processor.” Specifically, in its
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`claim chart for limitation 13c based on Palmer, Vanden Heuvel, and Osamu,
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`Petitioner fails to cite to any disclosure of a “mid-1990s mobile processor.” See
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`Petition at 40. The citations to the Vanden Heuvel reference are defective for the
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`same reasons mentioned above with regard to claim 1. The few additional
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`citations to Palmer similarly do not disclose a processor, much less the “mid-1990s
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`mobile processor” that Petitioner asserts is required. Moreover, as the Palmer
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`reference was filed in 1990, it also chronologically cannot possibly meet
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`Petitioner’s own proposed construction.
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`Similarly, Petitioner’s citation to its expert’s declaration cannot cure the
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`defect in the Petition. In the cited sections, Petitioner’s expert fails to even allege
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`that either the Vanden Heuvel or Palmer reference contains a “mid-1990s mobile
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`processor.” In fact, as mentioned above, Petitioner’s expert concedes that the
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`Vanden Heuvel processor is different from the ’566 patent in some undisclosed
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`manner.
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`And, with regard to the challenges based on the Ultra Golf combination,
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`Petitioner’s citation for limitation 13c again fails to mention a processor. See
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`Petition at 56-57. As mentioned above, Exhibit 1009 does not even include the
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`word “processor.” The additional citations on pages 56-57 to Exhibit 1011 cannot
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`cure this deficiency, as Petitioner does not allege that Exhibit 1011 discloses a
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`processor either. In fact, as Exhibit 1011 is a document related to the Ultra Golf
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`software program, Petitioner could not possibly establish that Exhibit 1011
`
`discloses a processor. The citations to Petitioner’s expert fail for essentially the
`
`same reasons as set forth above with regard to limitation 1b.
`
`For each of these additional reasons, Petitioner’s challenges related to the
`
`“means for displaying” limitation fail, and the Board should not institute
`
`challenges to independent claim 1 and the claims that depend thereon.
`
`V. THE BOARD SHOULD NOT INSTITUTE PETITIONER’S
`REDUNDANT CHALLENGES
`
`The Board is “charged with securing the just, speedy, and inexpensive
`
`resolution of every proceeding and has the discretion to deny some grounds to
`
`ensure that objective is met.” Sony Corp v. Yissum Research Development Co. of
`
`15
`
`
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`Case IPR2014-00438
`Attorney Docket No: 30912-0003IP2
`
`the Hebrew Univ. of Jerusalem, IPR2013-00219 (Paper 33, Nov. 21, 2013), Ex.
`
`2009 at 3 (citing 37 C.F.R. §§ 42.1(b), 42.108(b)). To that end, the Board has the
`
`power to institute IPR “based on grounds covering all of the challenged claims,
`
`going forward on the grounds that the Board determine[s] to be the most sufficient
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`substantively.” Id. If the Board decides to institute IPR on any of the claims in the
`
`’566 patent, this Petition presents just such an opportunity for streamlining of the
`
`review process.
`
`A. The Board’s Precedent Requires Petitioner to Distinguish
`Between Otherwise Redundant Prior Art References
`
`The Board has recognized redundancy—both horizontal and vertical—as a
`
`basis for not considering every challenge raised by a petitioner:
`
`[M]ultiple grounds, which are presented in a redundant
`manner by a Petitioner who makes no meaningful
`distinction between them, are contrary to the regulatory
`and statutory mandates, and therefore are not entitled to
`consideration.
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Co., CBM2012-00003 (Paper 7,
`
`Oct. 25, 2012), Ex. 2010 at *2. When assessing non-redundancy, the “focus is on
`
`whether Petitioner articulated a meaningful distinction in terms of the relative
`
`strengths and weaknesses with respect to application of the reference disclosures to
`
`one or more claim limitations.” Oracle Corp. v. Patent of Clouding IP, LLC,
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`IPR2013-00075 (Paper 15, June 13, 2013), Ex. 2011 at *1.
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`16
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`Case IPR2014-00438
`Attorney Docket No: 30912-0003IP2
`
`In Liberty Mutual, the Board recognized that a Petitioner may not assert a
`
`“plurality of prior art references applied not in combination to complement each
`
`other but as distinct and separate alternatives [where a Petitioner] do[es] not
`
`explain why one reference more closely satisfies the claim limitation at issue in
`
`some respects than another reference, and vice versa.” Liberty Mutual Ins. Co. at
`
`*3 (emphasis added). As the Board explained “The underlying principle is this: If
`
`either the base ground or the ground with additional reference is better from all
`
`perspectives, Petitioner should assert the stronger ground and not burden the
`
`Patent Owner and the Board with the other.” Liberty Mutual Ins. Co. at *7
`
`(emphasis added).
`
`B.
`
`Petitioner’s Statement of Non-Redundancy Establishes that the
`Ultra Golf Reference is the Stronger Ground
`
`As noted above, to be effective, a statement of non-redundancy must
`
`establish “why one reference more closely satisfies the claim limitation at issue in
`
`some respects than another reference, and vice versa.” Liberty Mutual Ins. Co. at
`
`*3. However, Petitioner’s “Statement of Non-redundancy” actually establishes (1)
`
`that the Ultra Golf-based and Palmer-based challenges are redundant; and (2) that
`
`the Ultra Golf-based challenge lacks a key weakness of the Palmer-based
`
`challenge.
`
`17
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`Case IPR2014-00438
`Attorney Docket No: 30912-0003IP2
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`Specifically, Petitioner explains that the Ultra Golf grounds are required
`
`because “Patent Owner may attempt to distinguish elements of the challenged
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`claims based upon purportedly unique screen sequences (such as the ‘pre-game’
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`screens of the ’566 patent), which are clearly described by Ultra Golf and PGA
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`Tour Golf.” Id. As Petitioner’s stated basis for needing the Ultra Golf grounds is
`
`that this ground “clearly” shows the claimed “screen sequences,” it follows that the
`
`Petitioner believes that Ultra Golf more strongly shows the claimed “screen
`
`sequences” than the redundant Palmer-based grounds.
`
`While touting the purported strengths of the Ultra Golf-based challenge,
`
`Petitioner neither identifies nor explains any corresponding strength of the Palmer-
`
`based challenge. In fact, the entire statement of non-redundancy is focused on the
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`various purported strengths of the Ultra Golf reference, including an assertion that
`
`“the gaming industry is particularly relevant to the claimed subject matter.”9
`
`Given that Petitioner has not identified any required “perspective” from which the
`
`Palmer challenges are stronger, and given Petitioner’s assertion that the Ultra Golf
`
`9 Id. In the Statement of Non-Redundancy, Petitioner also fails to mention the
`
`Game Boy component of the Ultra Golf ground—perhaps because to do so would
`
`remind the Board that Game Boy is also a handheld device, thus further obviating
`
`the Palmer reference.
`
`18
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`Case IPR2014-00438
`Attorney Docket No: 30912-0003IP2
`
`challenges cover all of the claims in the Petition, the Palmer-based challenges
`
`should not be instituted because they are needlessly redundant.
`
`C.
`
`Petitioner is Correct that the Palmer-Based Challenges Do Not
`Disclose the Claimed Information Screens
`
`As Petitioner essentially concedes in its statement of non-redundancy, the
`
`challenges based on the combination of Palmer and Osamu and/or Vanden Heuvel
`
`fail with respect to the limitation “storing a plurality of pre-game, game interactive
`
`and post-game information screens” of claims 4-5, 13, and 17. In particular,
`
`looking at pages 37 and 38 of the Petition, the charting of claim 4, Petitioner
`
`provides distinct statements in its claim chart explicitly identifying the claimed
`
`“game-interactive” screens and the claimed “post-game” screens, yet never
`
`explicitly mentions the claimed “pre-game” screens. Similar omissions exist with
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`regard to claims 13 and 17.
`
`Even assuming that the unlabeled portions are intended to apply to the
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`claimed “pre-game” screens, the assertions utterly fail because none of cited
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`sections mention any pre-game activities—much less screens. Specific
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