Filed on behalf of: Black Hills Media, LLC
`By: Andrew Crain (andrew.crain@thomashorstemeyer.com)
`
`Vivek A. Ganti (vivek.ganti@thomashorstemeyer.com)
`
`THOMAS | HORSTEMEYER, LLP
`
`400 Interstate North Parkway, SE
`
`Suite 1500
`
`Atlanta, Georgia 30339
`
`Tel: (770) 933-9500
`
`Fax: (770) 951-0933
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`---------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`---------------
`
`SAMSUNG ELECTRONICS CO., LTD.;
`
`SAMSUNG ELECTRONICS AMERICA, INC.; and
`
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC
`
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`
`Patent Owner
`
`---------------
`
`Case IPR2014-00717
`
`U.S. Patent 6,108,686
`
`---------------
`
`
`
`PRELIMINARY RESPONSE BY
`PATENT OWNER UNDER 37 C.F.R. § 42.107
`
`
`By: Andrew Crain (andrew.crain@thomashorstemeyer.com)
`
`Vivek A. Ganti (vivek.ganti@thomashorstemeyer.com)
`
`THOMAS | HORSTEMEYER, LLP
`
`400 Interstate North Parkway, SE
`
`Suite 1500
`
`Atlanta, Georgia 30339
`
`Tel: (770) 933-9500
`
`Fax: (770) 951-0933
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`---------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`---------------
`
`SAMSUNG ELECTRONICS CO., LTD.;
`
`SAMSUNG ELECTRONICS AMERICA, INC.; and
`
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC
`
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`
`Patent Owner
`
`---------------
`
`Case IPR2014-00717
`
`U.S. Patent 6,108,686
`
`---------------
`
`
`
`PRELIMINARY RESPONSE BY
`PATENT OWNER UNDER 37 C.F.R. § 42.107
`
`
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`
`THE ASSERTED GROUNDS OF UNPATENTABILITY ....................... 2
`
`
`
`I.
`
`II.
`
`III. GROUND I IS REDUNDANT IN VIEW OF GROUND II ...................... 3
`
`IV. THE PROPOSED COMBINATION UNDER GROUND I OF
`REILLY WITH
`THE
`TLA
`RENDERS
`REILLY
`UNSATISFACTORY FOR ITS INTENDED PURPOSE ......................... 5
`
`V.
`
`PETITIONER HAS NOT ARTICULATED ANY SUFFICIENT
`REASON AS TO WHY A PERSON OF ORDINARY SKILL IN
`THE ART WOULD COMBINE THE DISCLOSURES OF REILLY
`AND THE TLA, AS ALLEGED IN GROUND I ....................................... 8
`
`A.
`
`B.
`
`Petitioner has not articulated a sufficient reasoning as to why a
`person of ordinary skill in the art would consider “revenue
`models” ................................................................................................. 8
`
`Even if Reilly and the TLA “relate to commercial online
`services,”
`this
`is
`insufficient
`to support a conclusion of
`obviousness ........................................................................................ 11
`
`VI. DR. ALMEROTH IS NOT AN EXPERT WITH RESPECT TO
`“BUSINESS MODELS” AND “REVENUE MODELS” .........................12
`
`VII. PATENT OWNER HAS BEEN AUTHORIZED TO FILE A
`MOTION FOR ADDITIONAL CONCERNING WHETHER
`PETITIONER FAILED TO IDENTIFY ALL PARTIES IN
`INTEREST IN ITS PETITION .................................................................14
`
`VIII. CONCLUSION ............................................................................................15
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`CASES
`Heart Failure Tech. v. CardioKinetix, Inc., IPR2013-00183 (Paper 12) ................11
`In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) ................................................5, 7
`InTouch Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014)
` .................................................................................................................................... 8
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (U.S. 2007) ...................... 8, 10, 11
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-
`00003, Paper 7 ............................................................................................................ 3
`Oracle Corp. v. Clouding IP, LLC, IPR2013-00088, Paper 13 .............................4, 5
`
`STATUTES
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314 ....................................................................................................1, 15
`37 C.F.R. § 42.107 .................................................................................................1, 2
`37 C.F.R. § 42.120 ..................................................................................................... 2
`37 C.F.R. § 42.64 ....................................................................................................... 3
`Fed. R. Evid. 802 ....................................................................................................... 3
`
`
`
`ii
`
`
`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Black Hills Media, LLC
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`
`
`
`(hereinafter “Patent Owner”) hereby respectfully submits this Preliminary
`
`Response to the Petition (hereinafter “the Petition”) filed by Samsung Electronics
`
`Co. Ltd.; Samsung Electronics America, Inc.; and Samsung Telecommunications
`
`America, LLC (hereinafter “Petitioner”) for inter partes review of claims 1, 2, 20,
`
`23, 29, and 30 of U.S. Patent No. 6,108,686 (hereinafter “the ’686 Patent”). This
`
`filing is timely under 35 U.S.C. § 313, and 37 C.F.R. § 42.107, as it is being filed
`
`within three months of the May 7, 2014 mailing date of the Notice granting the
`
`filing date of the Petition (“Paper 3”).
`
`
`
`
`
`INTRODUCTION
`I.
`“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 . . . 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.”
`
`35 U.S.C. § 314(a). A trial should not be instituted in this matter as none of the
`
`references relied upon by Petitioner in its Petition gives rise to a reasonable
`
`likelihood of Petitioner prevailing with respect to any challenged claim of the ’686
`
`Patent, either alone or in any combination with each other.
`
`1
`
`
`
`Because a patent owner is precluded from filing new testimonial evidence to
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`
`
`
`support a preliminary response to a petition for inter partes review, Patent Owner
`
`is unable to submit a declaration from an expert in the art to assist in the Board’s
`
`understanding of the ’686 Patent and the cited references. 37 CFR § 42.107(c). As
`
`such, Patent Owner declines to present through this Preliminary Response
`
`substantive arguments regarding the technology of the ’686 Patent and the
`
`disclosures of the cited references. Despite not filing substantive technical
`
`arguments in this Preliminary Response, Patent Owner nevertheless submits that
`
`the bases presented herein support the denial of Petitioner’s Petition. But if the
`
`Board does institute trial with respect to any claim challenged in the Petition,
`
`Patent Owner reserves the right to present any arguments through a Patent Owner
`
`response under 37 C.F.R. § 42.120 and to submit any admissible evidence in
`
`support thereof. Patent Owner’s election to reserve its substantive arguments
`
`regarding the technology of the ’686 Patent and the cited references should not
`
`lead to any adverse inferences by the Board.
`
`
`
`
`
`II. THE ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts that claims 1, 2, 20, 23, 29, and 30 are unpatentable under
`
`the following two grounds:
`
`
`
`2
`
`
`
`
`
`Ground
`
`Claims
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`Basis
`
`1, 2 , 20, 23, 29, and 30
`
`1, 2, 20, 23, 29, and 30
`
`35 U.S.C. § 103(a) in view of Reilly and
`the TLA
`35 U.S.C. § 102(e) based on Reilly
`
`I
`
`II
`
`
`Paper 1 (the Petition), p. 4. Ground II is an anticipation challenge to claims 1, 2,
`
`20, 23, 29, and 30 based on the U.S. Patent No. 5,740,549, issued to Reilly et al.
`
`(hereinafter “Reilly”). Ground I is an obviousness challenge to these same claims
`
`also based on Reilly and further in view of Weiss, “New Places to Go Online,”
`
`14(8) Technology and Learning 109-115 (1994)1 (hereinafter “the TLA”).
`
`
`
`
`
`III. GROUND I IS REDUNDANT IN VIEW OF GROUND II
`The Board should not institute inter partes review for a ground that is
`
`redundant over another ground. Liberty Mutual Insurance Co. v. Progressive
`
`Casualty Insurance Co., CBM2012-00003, Paper 7, p. 2 (Oct. 25, 2012)
`
`(“[M]ultiple grounds, which are presented in a redundant manner by a petitioner
`
`who makes no meaningful distinction between them, are . . . not all entitled to
`
`
`
` 1
`
` Patent Owner reserves the right to object to and, if necessary, move to exclude
`the TLA under 37 C.F.R. § 42.64, as the TLA is being relied upon for inadmissible
`hearsay under Fed. R. Evid. 802.
`
`3
`
`
`
`
`consideration.”). Petitioner has advanced Ground I (obviousness based on Reilly
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`in view of the TLA) to challenge the same set of claims that are subject to Ground
`
`II (anticipation by Reilly). More specifically, Petitioner alleges in Ground II that
`
`all claim elements are explicitly or inherently disclosed in Reilly, while at the same
`
`time arguing in Ground I that one or more claim elements are not explicitly or
`
`inherently disclosed in Reilly but are nonetheless obvious in view of Reilly. In
`
`other words, Petitioner alleges that the same claims are anticipated by a reference
`
`and are also obvious in view of that same reference.
`
`
`
`When advancing alternative grounds, a petitioner should "articulate a
`
`meaningful distinction in terms of relative strengths and weaknesses with respect
`
`to application of the prior art disclosures to one or more claim limitations.” Oracle
`
`Corp. v. Clouding IP, LLC, IPR2013-00088, Paper 13, at p. 3 (June 13, 2013)
`
`(emphasis added). In the present case, the Petition is devoid of any explanation as
`
`to why two different grounds are warranted to challenge the ’686 Patent,
`
`particularly when the same art (Reilly) is used as a primary reference in both
`
`grounds. Petitioner provides no discussion of the relative weaknesses or even the
`
`strengths pertaining to each ground.
`
`
`
`In Oracle Corp., a petitioner for an inter partes review alleged that claims
`
`were (i) anticipated in view of a reference under a first ground and (ii) obvious in
`
`view of the same reference combined with an additional reference under a second
`
`4
`
`
`
`
`ground. Id. at p. 2. The Board found that the obviousness ground was redundant
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`over the anticipation ground. Id. at p. 3. Specifically, the Board stated:
`
`Because Oracle alleges that all the features of the claims at issue are
`disclosed by Schilit, the ground based on a combination of Barrett and
`Schilit is redundant in the absence of the Petition’s explanation as to
`why Barrett is more preferred for satisfying some elements, while
`Schilit is more preferred for satisfying some other elements.
`Id. In the present case, the obviousness ground based on Reilly (Ground I) is
`
`redundant because Petitioner also alleges that all the claim elements are anticipated
`
`by Reilly (Ground II) without “articulat[ing] a meaningful distinction in terms of
`
`relative strengths and weaknesses” between the two alleged grounds. Id.
`
`
`
`IV. THE PROPOSED COMBINATION UNDER GROUND I OF
`REILLY WITH
`THE
`TLA
`RENDERS
`REILLY
`UNSATISFACTORY FOR ITS INTENDED PURPOSE
`
`If a modification to a cited reference would render the disclosure of the cited
`
`reference unsatisfactory for its intended purpose, then such a modification is not
`
`obvious. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). As explained below,
`
`Petitioner proposes a modification of Reilly that would render Reilly unsatisfactory
`
`for its intended purpose.
`
`The entire disclosure of Reilly is directed towards a system for distributing
`
`advertising with information. In fact, the title of Reilly is “Information and
`
`5
`
`
`
`
`Advertising Distribution System and Method.” Ex. 1003 (Reilly), title (emphasis
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`added). Additionally, both the Abstract and the Summary of the Invention of
`
`Reilly state, “In summary, the present invention is an information and advertising
`
`distribution system.” Id. at abstract and 2:62-63 (emphasis added). The purpose
`
`of the disclosure of Reilly is also set forth in the Background of the Invention,
`
`which states:
`
`Up until the present, distributing information via the Internet or other
`publicly accessible computer communication networks has been
`largely unsupported by advertising revenues due to the lack of good
`mechanisms for mixing advertising and information content in such a
`way as to be acceptable to both end users and advertisers.
`Id. at 1:45-53 (emphasis added). The Background of the Invention also states “The
`
`present invention mixes advertising and information content dissemination in a
`
`manner unlike the examples mentioned above.” Id. at 2:25-27. Thus, Reilly
`
`makes it clear that the intended purpose of the disclosure is to distribute advertising
`
`with information.
`
`Even though the purpose of Reilly is to distribute advertisements with
`
`information, Petitioner somehow concludes that it would be obvious to modify
`
`Reilly so that advertising would not be distributed. Specifically, Petitioner alleges:
`
`In particular, as set forth in the Technology & Learning Article, a
`person of ordinary skill in the art would understand that, in an
`educational context, the system of the Reilly patent may be
`
`6
`
`
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`
`
`implemented instead based on a revenue model in which no ads are
`served to the users. Almeroth Dec., ¶ 39. For that reason, a person of
`ordinary skill in the art would have reason to implement the system
`and method of the Reilly patent using a business model that included
`no ads, as disclosed in the Technology & Learning Article, in order to
`provide customers a user experience free of ads. Almeroth Dec., ¶ 39.
`Paper 1 (the Petition), pp. 26-27.
`
`
`
`However, it is self-evident that modifying an information and advertising
`
`distribution system so that it does not distribute advertising defeats the purpose of
`
`the information and advertising distribution system. In addition, it is readily
`
`apparent that a system that does not distribute advertisements would not “be
`
`acceptable to both users and advertisers,” which is the intent of Reilly. Ex. 1003
`
`(Reilly), 1:51-52.
`
`Therefore, the proposed combination of Reilly and the TLA renders Reilly
`
`unsatisfactory for its intended purpose of being an information and advertising
`
`distribution system. For at least this reason, Petitioner’s proposed combination of
`
`Reilly and the TLA is not obvious. In re Gordon, 733 F.2d at 902.
`
`
`
`7
`
`
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`V.
`
`PETITIONER HAS NOT ARTICULATED ANY SUFFICIENT
`REASON AS TO WHY A PERSON OF ORDINARY SKILL IN
`THE ART WOULD COMBINE THE DISCLOSURES OF
`REILLY AND THE TLA, AS ALLEGED IN GROUND I
`
`
`
`
`
`A.
`
`Petitioner has not articulated a sufficient reasoning as to
`why a person of ordinary skill in the art would consider
`“revenue models”
`
`A challenge under obviousness requires an “articulated reasoning with some
`
`rational underpinning” to support its conclusion of obviousness. KSR Int'l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 418 (2007). See also, InTouch Techs., Inc. v. VGo
`
`Communs., Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (overturning a finding of
`
`obviousness because an expert’s testimony did not sufficiently explain why a
`
`proposed combination was obvious). Petitioner’s obviousness allegation lacks
`
`sufficient rationale because Petitioner speculates as to what a person of ordinary
`
`skill in the art (POSITA) would have known while ignoring its own definition of a
`
`POSITA.
`
`Petitioner alleges:
`
`The person of ordinary skill in the art, based on the disclosure in the
`Reilly patent of the service of ads to the users of its system, would be
`aware that an ad-based revenue model may be used to provide online
`information services to users. Almeroth Dec., ¶ 39. Such a person
`would have reason to consider other revenue models, including
`subscription-based models that incorporate fewer ads, or no ads, that
`would be more appropriate for contexts such as, for example, the
`
`8
`
`
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`
`
`provision of online educational services. Almeroth Dec., ¶ 39. In
`particular, as set forth in the Technology & Learning Article, a person
`of ordinary skill in the art would understand that, in an educational
`context, the system of the Reilly patent may be implemented instead
`based on a revenue model in which no ads are served to the users.
`Almeroth Dec., ¶ 39.
`Paper 1 (the Petition), pp. 26-27 (emphasis added). As noted above, Petitioner’s
`
`reason to combine the cited references is based entirely on the allegation that a
`
`person of ordinary skill in the art would consider the implementation of different
`
`revenue models. However, Petitioner does not provide any articulated reasoning as
`
`to why a person of ordinary skill in the art would have reason to consider “revenue
`
`models.”
`
`
`
`Petitioner does not show or even allege that a person of ordinary skill in the
`
`art would have any level of knowledge or skill with respect to revenue models,
`
`even under Petitioner’s own definition of a person of ordinary skill in the art. The
`
`Petition states that a person of ordinary skill would “have had a M.S. degree in
`
`computer science in addition to two or more years of work experience relating to
`
`the field of the provision of information and multimedia services over wide area
`
`and local area networks.” Id. at p. 9. Notably, there is no mention of educational
`
`or experience requirements relating to revenue models. Petitioner’s definition of a
`
`person of ordinary skill does not have, for example, a business degree or a certain
`
`number of years making business decisions based on revenue models.
`
`9
`
`
`
`The skill set for a person of ordinary skill in the fields of computer science
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`
`
`
`and “the provision of information and multimedia services over wide area and
`
`local area networks” would be much different from the skill set for a person of
`
`ordinary skill in the field of revenue models. Furthermore, a person having only
`
`two years of experience in the field of “the provision of information and
`
`multimedia services over wide area and local area networks” would not be in the
`
`position to make decisions regarding (or even consider) revenue models, as a
`
`person with such little experience would not likely be tasked with managing
`
`revenue operations.
`
`
`
`Therefore, Petitioner has failed to sufficiently articulate a reasoning why a
`
`person having ordinary skill in the art of computer science and the provision of
`
`information and multimedia services over wide area and local area networks would
`
`“have reason to consider other revenue models, including subscription-based
`
`models that incorporate fewer ads, or no ads,” as is alleged in the Petition. Paper 1
`
`(the Petition), p. 26. For at least this reason, Petitioner has failed to provide the
`
`necessary “articulated reasoning with some rational underpinning” to support its
`
`conclusion of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
`
`(2007).
`
`10
`
`
`
`
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`B.
`
`Even if Reilly and the TLA “relate to commercial online
`services,” this is insufficient to support a conclusion of
`obviousness
`
`Petitioner also alleges that it would have been obvious to combine the
`
`disclosures of Reilly and the TLA because “each of the Reilly patent and the
`
`Technology & Learning Article relate to commercial online services.” Paper 1 (the
`
`Petition), p. 27. However, even if two references are in the same field, that alone is
`
`not enough to support a conclusion of obviousness under KSR. For example, in
`
`Heart Failure Tech. v. CardioKinetix, Inc., IPR2013-00183 (Paper 12), p. 9, a
`
`petitioner alleged that a combination of references was obvious because both the
`
`references “related” to the same field of technology. In that case, the Board
`
`refused to institute inter partes review, finding that such a conclusory statement
`
`did not satisfy the standard that KSR set for establishing obviousness. Id.
`
`Specifically, the Board stated:
`
`The fact that Murphy, Khairkhahan, and Lane all concern human heart
`repair is not in itself sufficient rationale for making the combination.
`Many heart repair devices exist. That fact alone would not make it
`obvious to combine their features. Petitioner must show some reason
`why a person of ordinary skill in the art would have thought to
`combine particular available elements of knowledge, as evidenced by
`the prior art, to reach the claimed invention. See KSR Int’l Co. v.
`Teleflex, Inc., 550 U.S. 398, 418 (2007). This, the Petitioner has not
`done. That the references relied upon all relate to human heart repair
`
`11
`
`
`
`
`
`does not amount to “some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.”
`Id. (emphasis in original). Thus, in the present case, even if Reilly and the TLA
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`were related to commercial online services, this alone is insufficient to support a
`
`conclusion of obviousness under KSR.
`
`
`
`VI. DR. ALMEROTH IS NOT AN EXPERT WITH RESPECT TO
`“BUSINESS MODELS” AND “REVENUE MODELS”
`
`
`
`Petitioner’s contentions with respect to Ground I rely on Dr. Almeroth’s
`
`declaration stating that the TLA discloses various “business models” and that a
`
`person of ordinary skill in the art would have reason to implement different types
`
`of “revenue models.”2 Ex. 1005 (Almeroth Decl.), ¶¶ 38-39. However, Dr.
`
`Almeroth is not an expert with respect to business models or revenue models, and
`
`his opinions based on business models and revenue models should be given very
`
`little weight, if any.
`
`
`
`Dr. Almeroth’s declaration indicates that he believes that he is a person of
`
`skill in the field of “the provision of information and content over wide area and
`
`
`
` 2
`
` The terms “business model” and “revenue model” do not appear in the TLA. By
`using the terms “business model” and “revenue model” interchangeably, Dr.
`Almeroth appears to believe that these terms have the same meaning.
`
`12
`
`
`
`
`local area networks.” Id. at ¶ 4. However, nothing in the Petition or Dr.
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`Almeroth’s declaration presents Dr. Almeroth as being an expert with respect to
`
`business models or revenue models. Additionally, Dr. Almeroth’s curriculum vitae
`
`does not show an advanced business degree, extensive practical business
`
`experience, or anything else that would indicate that he is potentially an expert
`
`with respect to business models or revenue models. Thus, Dr. Almeroth is not an
`
`expert in business models or revenue models, nor is he even presented by
`
`Petitioner as being an expert in these areas.
`
`
`
`Notwithstanding the fact that Dr. Almeroth is not an expert with respect to
`
`business models or revenue models, Dr. Almeroth still provides an opinion
`
`regarding these areas. In particular, in his declaration, Dr. Almeroth states:
`
`In particular, as set forth in the Technology & Learning Article, a
`person of ordinary skill in the art would understand that, in an
`educational context, the system of the Reilly patent may be
`implemented instead based on a revenue model in which no ads are
`served to the users. For that reason, a person of ordinary skill in the
`art would have reason to implement the system and method of the
`Reilly patent using a business model that included no ads, as disclosed
`in the Technology & Learning Article, in order to provide customers a
`user experience free of ads.
`Ex. 1005 (Almeroth’s Declaration), ¶ 39. Because Dr. Almeroth is not an expert in
`
`business models or revenue models, his opinions regarding business models and
`
`13
`
`
`
`
`revenue models (e.g., paragraphs ¶ 38-41) are not credible and should be given
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`very little weight, if any.
`
`
`
`VII. PATENT OWNER HAS BEEN AUTHORIZED TO FILE A
`MOTION FOR ADDITIONAL CONCERNING WHETHER
`PETITIONER FAILED TO IDENTIFY ALL PARTIES IN
`INTEREST IN ITS PETITION
`
`On August 7, 2014, the Board issued Paper No. 8, Authorization for Patent
`
`Owner to File Motion for Additional Discovery, which Patent Owner requested
`
`based on its belief that Petitioner should have identified Google, Inc. as a real party
`
`in interest in this proceeding pursuant to 35 U.S.C. §312(a)(2). Should the Board
`
`grant Patent Owner’s motion for additional discovery, and if Patent Owner
`
`thereafter believes it can establish that Google should have been identified as a real
`
`party-in-interest to this proceeding, then Patent Owner reserves the right to seek
`
`authorization to move for termination of this proceeding pursuant to at least 35
`
`U.S.C. §312(a)(2).
`
`
`
`
`
`14
`
`
`
`VIII. CONCLUSION
`For the foregoing reasons, there is no reasonable likelihood of Petitioner
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`
`
`
`
`prevailing with respect to even one of the challenged claims. Accordingly, the
`
`Petition should be denied under 35 U.S.C. § 314(a).
`
`Dated: August 7, 2014
`
`
`
`Respectfully submitted,
`
`/N. Andrew Crain/_____
`N. Andrew Crain
`(Reg. No. 45,442)
`Lead Counsel for Patent Owner
`Thomas | Horstemeyer, LLP
`400 Interstate North Pkwy Ste. 1500
`Atlanta, Georgia 30339
`Tel: (770) 933-9500
`Fax: (770) 951-0933
`
`15
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2014-00717
`Patent No. 6,108,686
`
`
`In accordance with 37 C.F.R. §§ 42.6(e) and 42.107, the undersigned
`
`certifies that on the 7th day of August, 2014, a complete and entire copy of the
`
`PRELIMINARY RESPONSE BY PATENT OWNER UNDER 37 C.F.R. § 42.107
`
`(“Preliminary Response”) including exhibits relied upon were served on counsel of
`
`record for Petitioner at the correspondence address as follows,
`
`Andrea G. Reister
`Gregory S. Discher
`areister@cov.com
`gdischer@cov.com
`
`Covington & Burling LLP
`1201 Pennsylvania Avenue, NW
`Washington, DC 20004
`
`Attorneys for Petitioner
`
`
`
`via Federal Express No. 8019-4601-2178, postage prepaid because this is likely to
`
`
`
`THOMAS | HORSTEMEYER, LLP
`
`
`/N. Andrew Crain/
`N. Andrew Crain (Reg. No. 45,442)
`Lead Counsel for Patent Owner
`
`
`
`effect service.
`
`
`
`
`
`
`
` August 7, 2014
`
`
`Date
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
