`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`
`MERCEDES-BENZ USA, LLC
`And MERCEDES-BENZ U.S. INTERNATIONAL INC.
`Petitioner,
`
`v.
`
`VELOCITY PATENT, LLC,
`Patent Owner.
`__________________________________
`
`Case IPR2014-01247
`Patent 5,954,781
`__________________________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`__________________________________
`
`Filed on behalf of Patent Owner:
`James A. Shimota (pro hac vice motion to be filed)
`Howard Levin
`Aaron Taggart (pro hac vice motion to be filed)
`MAVRAKAKIS LAW GROUP LLP
`180 North LaSalle Street, Suite 2215
`Chicago, IL 60610
`Telephone: 312-216-1620
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patrick Richards
`RICHARDS PATENT LAW, PC.
`233 S. Wacker Dr., 84th Floor
`Chicago, IL 60606
`Telephone: 312-283-8555
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PRELIMINARY RESPONSE
`
`Petitioner Mercedez-Benz USA, LLC and Mercedes-Benz U.S.
`
`International, Inc. (“Petitioners”) have petitioned for inter partes review of
`
`independent claim 31 and its dependent claim 32 of U.S. Patent No.
`
`5,954,781 (“the ‘781 patent”) (“the Petition”). Velocity Patent, LLC (the
`
`“Patent Owner”) submits that the Petition must be denied as a matter of law.
`
`Prior to the submission of the Petition, the United States Patent and
`
`Trademark Office initiated ex parte reexamination of, inter alia, Claims 31
`
`and 32 of the ‘781 patent (Control No. 90/013,252). On [Insert Date], in
`
`response to an Office Action, the Patent Owner amended independent claim
`
`31 and, by virtue of its dependency, claim 32. (Ex. 1.) Accordingly, the
`
`claims challenged by Petitioners no longer exist, rendering the requested
`
`inter partes review impermissible. See Juniper Networks, Inc. v. Linex
`
`Technlogies, Inc., Case IPR 2014-00595, Paper 19 (September 26, 2014)
`
`(“Because [the] claims … of the [] patent, as challenged in the Petition, no
`
`longer exist, the Petition to institute an inter partes review of these claims is
`
`denied.”).
`
`
`
`In the interest of a clear record, Patent Owner disagrees with the
`
`overwhelming majority of the positions advocated by the Petitioners, but
`
`will not detail those reasons here since the Petition must be denied. As an
`
`
`
`example, in an inter partes review, claims must be given their broadest
`
`reasonable construction in light of the specification. 37 C.F.R. § 42.100(b).
`
`Contrary to that clear requirement, Petitioners propose to improperly limit
`
`the scope of certain claim elements to an embodiment disclosed in the
`
`specification. See, e.g., Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
`
`345 F.3d 1318, 1331-32 (Fed. Cir. 2003) (holding that attempt to “read in
`
`limitations from the specification” was “erroneous”). Patent Owner reserves
`
`the right to respond to positions advanced by Petitioners in another forum.
`
`CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that
`
`
`
`
`Petition be denied.
`
`
`
`
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
