UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 6
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC. AND LG
`ELECTRONICS MOBILECOMM U.S.A, INC.
`Petitioner,
`
`v .
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner
`
`Case No. IPR2014-01405
`Patent 6,493,770
`
`Before Amy Kattula, Trial Paralegal
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Paper No. 6
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC. AND LG
`ELECTRONICS MOBILECOMM U.S.A, INC.
`Petitioner,
`
`v .
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner
`
`Case No. IPR2014-01405
`Patent 6,493,770
`
`Before Amy Kattula, Trial Paralegal
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Case No. IPR2014-01405
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Page
`Introduction and Statement of Relief Requested.............................................1
`
`The Board Should Deny Inter Partes Review on Petitioner’s Multiple
`Grounds of Invalidity.......................................................................................2
`
`A.
`
`Petitioner fails to articulate why the multiple grounds of
`purported invalidity are not redundant, the differences between
`the grounds, and the differences among the references
`underlying the grounds..........................................................................4
`
`III.
`
`Petitioner’s Asserted USB References Are Defective ....................................7
`
`A.
`
`Petitioner impermissibly relies on “admitted prior art” as a
`primary reference ..................................................................................7
`
`1.
`
`Petitioner’s citation to “admitted prior art” as to Grounds 1
`and 2 does not fall within a recognized exception ........................9
`
`2. The portions of the ‘770 Patent cited by Petitioner in
`Grounds 1, 2 and 4 do not qualify as “admitted prior art”..........12
`
`IV.
`
`V.
`
`B.
`
`Patent Owner intends to swear behind the Yap reference ..................17
`
`Petitioner Fails To Establish a Prima Facie Case of Obviousness to
`Support its Proposed Grounds 2 and 4 ..........................................................18
`
`Proceeding on Grounds Based Solely on the PCMCIA References
`Would Realize Efficiencies across all of Petitioner’s Related Petitions
`for Inter Partes Review .................................................................................22
`
`VII. Conclusion .....................................................................................................28
`
`i
`
`
`
`Case No. IPR2014-01405
`
`TABLE OF AUTHORITIES
`
`CASES
`Carestream Health, Inc. v. Smartplates, LLC,
`Case No. IPR2013-00600 (Paper 9, March 5, 2014)..........................................10
`
`Page(s)
`
`Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd.,
`Case No. IPR2013-00038 (Paper 9, March 21, 2013)..........................................9
`
`Constant v. Advanced Micro-Devices Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ..........................................................................13
`
`In re Lopresti,
`333 F.2d 932 (CCPA 1964)................................................................................13
`
`Intellectual Ventures Mgmt., LLC v. XILINX, Inc.,
`Case No. IPR2012-00023 (Paper 35, February 11, 2014)..................................11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (U.S. 2007)........................................................................16, 18, 19
`
`Liberty Mut. Ins. Comp. v. Progressive Ins. Comp.,
`Case No. CBM2012-00003 (Paper 8, October 25, 2012).....................................4
`
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed Cir. 2012) ...........................................................................16
`
`Nichia Corp. v. Emcore Corp.,
`Case No. IPR2012-00005 (Paper 68, February 11, 2014)..................................10
`
`Oracle Corp. v. Clouding IP, LLC,
`IPR2013-00075 (Paper 15, June 13, 2013)...........................................................5
`
`Riverwood Int’l Corp. v. R.A. Jones & Co.,
`324 F.3d 1346 (Fed. Cir. 2003) ..........................................................................13
`
`Zoll Lifecor Corp. v. Koninklijke Philips Elecs. N.V.,
`Case No. IPR2103-00616 (Paper 14, Jan. 13, 2014)..........................................23
`
`STATUTES
`
`35 U.S.C. § 102(a) .....................................................................................................8
`
`ii
`
`
`
`Case No. IPR2014-01405
`Page(s)
`35 U.S.C. § 102(b) .....................................................................................................9
`
`35 U.S.C. §103.............................................................................................18, 19, 24
`
`35 U.S.C. § 311(b) ............................................................................................passim
`
`35 U.S.C. § 312(a) and § 312(b)..............................................................................11
`
`35 U.S.C. § 314........................................................................................................28
`
`35 U.S.C. § 326(b) .....................................................................................................4
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.1(b) ..............................................................................................4, 28
`
`37 C.F.R. § 42.107(a).................................................................................................1
`
`157 Cong. Rec. S1350 (daily ed. March 8, 2011) ...................................................28
`
`Manual of Patent Examining Procedure § 2129 ......................................................13
`
`Manual of Patent Examining Procedure § 2143(I)..................................................19
`
`Patent and Trademark Office, Office Patent Trial Practice Guide
`(published in Fed. Reg. Vol. 77, No. 157, August 14, 2012)...............................2
`
`iii
`
`
`
`Case No. IPR2014-01405
`
`Exhibit No.
`
`LIST OF EXHIBITS
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`U.S. Patent No. 6,012,103 to Sartore et al. (filed on July 2,
`1997) (issued on January 4, 2000)
`
`Petition To Institute an Inter Partes Review of U.S. Patent No.
`6,012,103 (Case No. IPR2014-01386)
`
`U.S. Patent No. 6,249,825 to Sartore et al. (filed on January 4,
`2000) (issued on June 19, 2001)
`
`Petition To Institute an Inter Partes Review of U.S. Patent No.
`6,249,825 (Case No. IPR2014-01396)
`
`Patent and Trademark Office, Office Patent Trial Practice Guide
`(published in Fed. Reg. Vol. 77, No. 157, August 14, 2012)
`
`Liberty Mut. Ins. Comp. v. Progressive Ins. Comp., Case No.
`CBM2012-00003 (Paper 8, October 25, 2012)
`
`Oracle Corp. v. Clouding IP, LLC, IPR2013-00075 (Paper 15,
`June 13, 2013)
`
`Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd.,
`Case No. IPR2013-00038 (Paper 9, March 21, 2013)
`
`Nichia Corp. v. Emcore Corp., Case No. IPR2012-00005 (Paper
`68, February 11, 2014)
`
`Carestream Health, Inc. v. Smartplates, LLC, Case No.
`IPR2013-00600 (Paper 9, March 5, 2014)
`
`Intellectual Ventures Mgmt., LLC v. XILINX, Inc., Case No.
`IPR2012-00023 (Paper 35, February 11, 2014)
`
`Zoll Lifecor Corp. v. Koninklijke Philips Elecs. N.V., IPR2013-
`00616 (Paper 14, January 13, 2014)
`
`iv
`
`
`
`Case No. IPR2014-01405
`
`Exhibit No.
`
`Description
`
`2013
`
`2014
`
`ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00133
`(Paper 53, February 26, 2014)
`
`112th Congress, 1st Session, Issue 157 Cong. Rec. S1350 (daily
`ed. March 8, 2011) (statement of Sen. Leahy)
`
`v
`
`
`
`Case No. IPR2014-01405
`
`I.
`
`Introduction and Statement of Relief Requested
`
`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner Cypress Semiconductor
`
`Corp. (“Cypress” or “Patent Owner”) hereby submits the following Preliminary
`
`Response to LG Electronics, Inc., LG Electronics U.S.A., Inc. and LG Electronics
`
`Mobilecomm U.S.A., Inc.’s (collectively “LG” or “Petitioner”) Petition for Inter
`
`Partes Review of U.S. Patent No. 6,493,770 (“the ‘770 Patent,” Exhibit 1001). For
`
`the reasons set forth below, this Preliminary Response is similar to Preliminary
`
`Responses that will be filed in response to LG’s Petitions for Inter Partes Review
`
`of U.S. Patent No. 6,012,103 (“the ‘103 Patent,” Exhibit 2001) (Case No.
`
`IPR2014-01386, petition attached as Exhibit 2002) and U.S. Patent No. 6,249,825
`
`(“the ‘825 Patent,” Exhibit 2003) (Case No. IPR2014-01396, petition attached as
`
`Exhibit 2004).
`
`Across all three petitions, including the instant petition for the ‘770 Patent,
`
`Petitioner proposes two grounds of invalidity against each challenged claim. The
`
`Board is charged with securing the just, speedy, and inexpensive resolution of
`
`every proceeding. However, instituting trial on two grounds per challenged claim
`
`instead of one ground per claim will have the opposite effect, a more cumbersome,
`
`time consuming, and expensive trial. In view of Petitioner’s failure to explain the
`
`relative strengths and weaknesses of one proposed ground over the other as to each
`
`challenged claim, the Board should deny Petitioner’s demand for trial on multiple
`
`
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`Case No. IPR2014-01405
`
`invalidity arguments for each claim. Additionally, as will be shown in this
`
`Preliminary Response, Petitioner’s Grounds 1, 2, 4 and 5 assert defective
`
`references as prior art and otherwise lack substantive merit. Those specific grounds
`
`should be rejected by the Board. If the Board decides that institution of trial is
`
`warranted, the Board should proceed only on Ground 3.1
`
`II.
`
`The Board Should Deny Inter Partes Review on Petitioner’s Multiple
`Grounds of Invalidity
`
`The Petition challenges claims 1-3, 5, 7, 10-13 and 15-20 of the ‘770 Patent
`
`with five proposed grounds of invalidity. Petition, Paper 1 at 3-4. As illustrated by
`
`the following table, Petitioner’s grounds can be reduced to two theories of
`
`invalidity for each challenged claim.
`
`Challenged Claim
`
`Claim 1
`
`Claim 2
`
`Claim 3
`
`Claim 5
`
`Petitioner’s Theory
`of Invalidity and Cited Art
`103 - APA and Yap;
`103 - Michelson, PCCextend and Davis
`103 - APA, Yap, and Michelson;
`103 - Michelson, PCCextend and Davis
`103 - APA, Yap, and Michelson;
`103 - Michelson, PCCextend and Davis
`103 - APA and Yap;
`103 - Michelson, PCCextend, Davis and APA
`
`1 No adverse inference should be drawn from Patent Owner’s decision not to
`
`wholly oppose institution of this inter partes review. See Patent and Trademark
`
`Office, Office Patent Trial Practice Guide (published in Fed. Reg. Vol. 77, No.
`
`157, August 14, 2012), Exhibit 2005 at § II-C.
`
`2
`
`
`
`Claim 7
`
`Claim 10
`
`Claim 11
`
`Claim 12
`
`Claim 13
`
`Claim 15
`
`Claim 16
`
`Claim 17
`
`Claim 18
`
`Claim 19
`
`Claim 20
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`Case No. IPR2014-01405
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`103 - APA and Yap;
`103 - Michelson, PCCextend, Davis and APA
`103 - APA and Yap;
`103 - Michelson, PCCextend and Davis
`103 - APA and Yap;
`103 - Michelson, PCCextend and Davis
`103 - APA, Yap, and Michelson;
`103 - Michelson, PCCextend and Davis
`103 - APA, Yap, and Michelson;
`103 - Michelson, PCCextend and Davis
`103 - APA and Yap;
`103 - Michelson, PCCextend, Davis and APA
`103 - APA and Yap;
`103 - Michelson, PCCextend and Davis
`103 - APA and Yap;
`103 - Michelson, PCCextend and Davis
`103 - Michelson, PCCextend and Davis
`102 - Yap;
`103 - Michelson, PCCextend, Davis and APA
`102 - Yap;
`103 - Michelson, PCCextend and Davis
`102 - Yap;
`
`The above table illustrates that for each challenged claim at least one of the
`
`proposed grounds of invalidity includes the Yap reference (U.S. Patent No.
`
`6,073,193, Exhibit 1002) and/or the “admitted prior art” (“APA,” U.S. Patent No.
`
`6,493,770, Exhibit 1001) as purported invalidating art while the other grounds
`
`include one or more of the Michelson reference (U.S. Patent No. 5,628,028,
`
`Exhibit 1003), the PCCextend reference (PCCextend 100 User’s Manual, Exhibit
`
`1004) and the Davis reference (U.S. Patent No. 5,862,393, Exhibit 1005). The Yap
`
`reference and the APA reference explicitly discuss the Universal Serial Bus
`
`3
`
`
`
`Case No. IPR2014-01405
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`(“USB”). The Michelson reference, the PCCextend reference and the Davis
`
`reference are directed towards a different computer bus technology, the PCMCIA
`
`bus, and do not discuss USB. Therefore, for simplicity, the references may be
`
`categorized as “the USB references” (Yap and APA) and “the PCMCIA
`
`references” (Michelson, PCCextend, and Davis).
`
`The above table further shows that for the challenged claims, except for
`
`claims 5, 7, 15 and 19, Petitioner asserts one ground based exclusively on the
`
`PCMCIA references.
`
`A.
`
`Petitioner fails to articulate why the multiple grounds of
`purported invalidity are not redundant, the differences between
`the grounds, and the differences among the references underlying
`the grounds
`
`Proceedings before the Board are governed by Part 42 of Title 37, Code of
`
`Federal Regulations in which § 42.1(b) provides that “[t]his part shall be construed
`
`to secure the just, speedy, and inexpensive resolution of every proceeding.” 37
`
`C.F.R. § 42.1(b). When applying these regulations, the Board has considered “the
`
`effect of the regulations on the economy, the integrity of the patent system, the
`
`efficient administration of the Office, and the ability of the Office to timely
`
`complete proceedings” as mandated by 35 U.S.C. § 326(b). Liberty Mut. Ins.
`
`Comp. v. Progressive Ins. Comp., Case No. CBM2012-00003 (Paper 8, October
`
`25, 2012), Exhibit 2006 at 9-10. Granting inter partes review on Petitioner’s
`
`4
`
`
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`Case No. IPR2014-01405
`
`redundant grounds would be contrary to these statutory considerations and would
`
`frustrate Congressional intent.
`
`A petition that includes alternative grounds for challenging patentability
`
`should explain the differences between the references underlying the grounds and
`
`why the proposed grounds are not redundant. The focus of a redundancy
`
`designation is whether “the Petitioner articulated a meaningful distinction in terms
`
`of relative strengths and weaknesses with respect to application of the reference
`
`disclosures to one or more claim limitations.” Oracle Corp. v. Clouding IP, LLC,
`
`IPR2013-00075 (Paper 15, June 13, 2013), Exhibit 2007 at 3. Even where the
`
`references may be fundamentally different with respect to theories of invalidity or
`
`disclosures of certain claim limitations, such differences are insufficient, “[w]hat
`
`matters for determining redundancy of grounds is whether petitioner has
`
`articulated meaningful distinction in the potential strength and weaknesses of the
`
`applied prior art.” Id. at 4.
`
`In the instant case, the Petition and supporting Declaration (Exhibit 1012)
`
`are silent as to how any one prior art reference or group of references underlying a
`
`proposed ground of invalidity is preferable to another with respect to any
`
`challenged claim or claim element. While the Declaration does describe the
`
`references underlying each ground, the declarant does not explain how the
`
`references differ from one another or discuss at all the relative strengths and
`
`5
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`
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`Case No. IPR2014-01405
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`weaknesses of any one reference or set of references as compared to any other
`
`when applied to the elements of the challenged claims. Declaration, Exhibit 1012,
`
`Declaration of Geert Knapen at ¶¶ 56-62, describing the alleged APA; ¶¶ 63-69,
`
`describing Yap; ¶¶ 70-75, describing Michelson; ¶¶ 76-81, describing PCCextend;
`
`¶¶ 82-87, describing Davis.
`
`Petitioner does purport to briefly discuss the redundancy of the references,
`
`but does so without comparing or contrasting the teachings of the references. The
`
`Petition notes that Patent Owner may swear behind the Yap reference. Petition,
`
`Paper 1 at 4. Petitioner claims that for this reason alone the proposed grounds that
`
`assert the Yap reference are not redundant to the proposed grounds that do not
`
`assert the Yap reference, including those grounds that utilize the PCMCIA
`
`references. Id. This cursory observation as to the filing dates of the Yap reference
`
`and the other asserted references fails to provide the Board with any meaningful
`
`substantive distinction as to the teachings of the references that would enable the
`
`Board to make a determination as to the relative strengths and weaknesses of the
`
`grounds. Petitioner’s simple note that the Patent Owner may swear behind Yap
`
`does not satisfy Petitioner’s obligation to meaningfully articulate the differences
`
`between Yap and the other asserted references and related grounds to avoid a
`
`finding of redundancy.
`
`6
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`Case No. IPR2014-01405
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`Petitioner fails to explain the substantive differences between the USB
`
`references and the PCMCIA references underlying the two respective theories of
`
`invalidity for each claim element or the relative strengths and weaknesses of the
`
`references and grounds with respect to the limitations of the challenged claims.
`
`Since Petitioner has failed to articulate why the proposed grounds are not
`
`redundant, the Board should, if it decides that trial on any challenged claim is
`
`warranted, limit any institution of trial to a single ground of invalidity for any
`
`challenged claim. Instituting trial on more than one ground per challenged claim
`
`would frustrate the efficient and just administration of the proceeding and
`
`unnecessarily hamper the ability of the Board to timely complete the proceeding.
`
`III. Petitioner’s Asserted USB References Are Defective
`
`The USB references relied upon by Petitioner, the Yap reference and the
`
`APA reference, are defective for the various reasons as shown below. Should the
`
`Board decide to institute trial in this case, it should utilize only those proposed
`
`grounds based exclusively on the PCMCIA references for inter partes review.
`
`Such action would bar trial on claims 5, 7, 15 and 19, but permit trial to proceed on
`
`claims 1-3, 10-13, 16-18 and 20.
`
`A.
`
`Petitioner impermissibly relies on “admitted prior art” as a
`primary reference
`
`Petitioner’s reliance on what it characterizes as “admitted prior art”
`
`disclosed as part of the challenged ‘770 Patent, is fatal to Petitioner’s Grounds 1, 2
`
`7
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`
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`Case No. IPR2014-01405
`
`and 4 because 35 U.S.C. § 311(b) allows for the institution of inter partes review
`
`“only on a ground that could be raised under Sections 102 or 103 and only on the
`
`basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
`
`Petitioner’s Grounds 1, 2 and 4 do not comport with the plain language of the
`
`statute as these grounds rely on alleged “admitted prior art” as a primary reference
`
`and do not rely on actual “patents or printed publications.” Petitioner’s alleged
`
`“admitted prior art” is not a patent or printed publication that may qualify as prior
`
`art, but rather excerpts taken from the very patent for which Petitioner seeks inter
`
`partes review. Petitioner’s grounds asserting the APA reference do not meet the
`
`threshold burden for grounds that could be raised under Sections 102 or 103. The
`
`statute requires Petitioner to come forward with actual prior art patents or printed
`
`publications, not “admitted prior art.” Petitioner’s Grounds 1, 2 and 4, which rely
`
`on the APA reference as prior art, fail as a matter of law.
`
`To this end, Petitioner directed its declarant to ignore the law on the question
`
`of what qualifies as prior art. Petitioner’s declarant describes his understanding of
`
`the law as follows: “to be prior art with respect to a particular patent in this
`
`proceeding, a reference must have been published, or patented, or be the subject of
`
`a patent application by another, before the priority date of the patent.” Declaration,
`
`Exhibit 1012 at ¶ 26 (emphasis added). This is indeed a correct statement of the
`
`law both before and after the America Invents Act. See 35 U.S.C. §§ 102(a) and
`
`8
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`Case No. IPR2014-01405
`
`102(b). For material to qualify as prior art, it must be available before the priority
`
`date of the challenged patent. Yet, in the same paragraph, declarant then states that
`
`he was asked to presume that all of the asserted prior art references, including the
`
`APA reference, “were available to a person of ordinary skill in the art on or before
`
`the priority date of the patent.” Exhibit 1012 at ¶ 31 . (emphasis added). So, despite
`
`properly informing declarant of the law, Petitioner nevertheless instructed its
`
`declarant to ignore the law and consider publications available on the priority date
`
`of the patent, namely the ‘770 Patent itself, to be prior art. The Board should
`
`acknowledge Petitioner’s own admission of the controlling law as to what
`
`constitutes prior art in an inter partes review proceeding and reject the use of
`
`disclosures in the challenged patent described as “admitted prior art.”
`
`1.
`
`Petitioner’s citation to “admitted prior art” as to Grounds 1
`and 2 does not fall within a recognized exception
`
`Despite the language of 35 U.S.C. § 311(b), some panels of the Board have
`
`utilized “admitted prior art” in inter partes review for limited purposes. Such
`
`purposes include claim interpretation, aiding with the interpretation of an actual
`
`prior art reference, judging the credibility of experts, and providing evidence of
`
`what one of skill in the art might have known. See, Chimei Innolux Corp. v.
`
`Semiconductor Energy Lab. Co., Ltd., Case No. IPR2013-00038, (Paper 9, March
`
`21, 2013) Exhibit 2008 at 19-20 (admitted prior art was used to support a finding
`
`that petitioner’s interpretation of a primary prior art reference was correct and that
`
`9
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`
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`Case No. IPR2014-01405
`
`petitioner’s expert testimony was credible); Nichia Corp. v. Emcore Corp., Case
`
`No. IPR2012-00005, (Paper 68, February 11, 2014) Exhibit 2009 at 9, 20-21, 24-
`
`27, 39-40 (admitted prior art was used for claim interpretation, interpretation of a
`
`primary prior art reference, and to rebut patent owner’s argument that prior art
`
`taught away from the invention); Carestream Health, Inc. v. Smartplates, LLC,
`
`Case No. IPR2013-00600, (Paper 9, March 5, 2014) Exhibit 2010 at 17, 23
`
`(admitted prior art used to show that a particular type of image plate claimed in a
`
`dependent claim was an obvious alternative to the image plate disclosed in a prior
`
`art patent that otherwise disclosed all of the limitations of the independent claim).
`
`However, in the present case, Petitioner’s Grounds 1 and 2 fully rely on
`
`“admitted prior art” as the primary reference for these asserted invalidity
`
`arguments. To this end, Petitioner relies heavily upon the purported “admitted prior
`
`art” to disclose two out of the three claim limitations of challenged independent
`
`claims 1, 11 and 18 and many of the challenged dependent claims. Petition, Paper
`
`1 at 22-24, 28-30, 31-32, 33-37; Declaration, Exhibit 1012 at ¶¶ 91-99, 105, 109-
`
`111, 112-114, 117-118, 119-120, 121, 122, 129-131, 133-134, 136, 138. Such
`
`reliance on “admitted prior art” as a primary reference is improper.
`
`The statute allows for inter partes review based “only on a ground that could
`
`be raised under Section 102 or 103 and only on the basis of prior art consisting of
`
`patents or printed publications.” 35 U.S.C. § 311(b). Any evidence offered by
`
`10
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`Case No. IPR2014-01405
`
`Petitioner that does not meet the definition of a “patent or printed publication”
`
`would at best constitute supporting evidence to a “patent or printed publication.”
`
`The statute provides a distinction between “patents or printed publications” and
`
`“affidavits or declarations of supporting evidence and opinions” in 35 U.S.C. §
`
`312(a)(3)(A) and § 312(a)(3)(B) and the Board has recognized that such a
`
`distinction exists. Intellectual Ventures Mgmt., LLC v. XILINX, Inc., Case No.
`
`IPR2012-00023, (Paper 35, February 11, 2014) Exhibit 2011 at 37 (recognizing the
`
`distinction between § 311(b), which requires that a ground of invalidity be based
`
`only on prior art consisting of patents or printed publications and § 312(a)(3),
`
`which allows supporting evidence to be offered). In Intellectual Ventures, the
`
`Board allowed for “supporting evidence” to be used to explain how one skilled in
`
`the art would view the invalidating references. Id. In contrast, here Petitioner’s
`
`Grounds 1 and 2 rely on the “admitted prior art” not to offer support or clarity in
`
`regards to any actual patents or printed publications that form a ground of
`
`invalidity, but as the primary reference in its obviousness assertions against several
`
`challenged claim limitations. The Board should reject Petitioner’s attempt to offer
`
`“supporting evidence” in the guise of admitted prior art as the primary basis of
`
`invalidity in contravention to the statute.
`
`11
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`Case No. IPR2014-01405
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`2.
`
`The portions of the ‘770 Patent cited by Petitioner in
`Grounds 1, 2 and 4 do not qualify as “admitted prior art”
`
`Even if the Board decides that the language of 35 U.S.C. § 311(b) allows for
`
`the consideration of the ‘770 Patent’s own disclosure as prior art, the Board should
`
`nevertheless reject Petitioner’s theories of invalidity based on the APA reference
`
`because the ‘770 Patent does not provide the prior art admissions that Petitioner
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`alleges.
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`Petitioner’s Ground 1 argues that the ‘770 Patent describes every aspect of
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`challenged independent claims 1 and 11 except for the electronic simulation of a
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`physical disconnection and reconnection of a peripheral device. Petition, Paper 1 at
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`22-24 and 31. Petitioner’s Ground 2 challenges claims that depend from the
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`independent claims 1 and 11 challenged in Ground 1 and therefore relies on the
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`same theory of invalidity as Ground 1. Petition, Paper 1 at 33-37. Petitioner further
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`relies upon a discussion of USB in the Background section of the ‘770 Patent to
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`support Ground 4. However, in each ground, Petitioner fails to apply the applicable
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`standard for determining what is actually admitted to be prior art. Petitioner instead
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`merely uses conclusory statements to ipse dixit assert that the admitted prior art is
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`whatever Petitioner says it is. In other words, Petitioner simply cites to portions of
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`the ‘770 Patent to support its invalidity theory without explaining why those
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`citations constitute admitted prior art as opposed to a description of the invention
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`of the ‘770 Patent.
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`Case No. IPR2014-01405
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`In the context of district court proceedings, a statement by an applicant
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`identifying the work of another as “prior art,” either in the specification or made
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`during prosecution, is an admission that can be relied upon for both anticipation
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`and obviousness determinations. See Riverwood Int’l Corp. v. R.A. Jones & Co.,
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`324 F.3d 1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc.,
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`848 F.2d 1560, 1570, (Fed. Cir. 1988); In re Lopresti, 333 F.2d 932, 934 (CCPA
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`1964); and M.P.E.P. § 2129. For example, where the specification provides
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`identification of work done by another as “prior art,” the subject matter so
`
`identified is treated as “admitted prior art.” Riverwood, 324 F.3d at 1354. Yet, the
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`‘770 Patent makes no such admissions with regard to the portions of the ‘770
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`Patent relied upon by Petitioner as “admitted prior art.”
`
`The ‘770 Patent expressly labels only Figures 1 and 3 as prior art. Petitioner
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`fails to provide any support to show that any other portion of the ‘770 Patent that it
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`cites, including the description of Figures 1 and 3, are also expressly identified as
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`prior art by the patentee as is required for statements to qualify as admitted prior
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`art.
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`Specifically, Petitioner points to the following description of the problem to
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`be solved in the Background section of the ‘770 Patent as admitted prior art in
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`support of Ground 1 for claim elements 1(a), 1(b), 1(c), claim 5, claim 7, claim
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`13
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`Case No. IPR2014-01405
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`elements 11(a), 11(b), 11(c), claim 15 and claim 16 and Ground 4 for claim 5,
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`claim 7, claim 15 and claim 19:2
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`In a serial bus system, such as the USB, the only opportunity for
`associating software device drivers with a peripheral device is at the
`time when the peripheral device is plugged into the USB and the
`enumeration process occurs. Thus, to alter the configuration or
`personality of a peripheral device, such as downloading new code or
`configuration information into the memory of the peripheral device,
`the host computer system must detect a peripheral device connection
`or a disconnection and then a reconnection.
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`See Petition, Paper 1 at 5 and ‘770 Patent, Exhibit 1001 at 2:20-28 (emphasis
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`added). From this, Petitioner summarily concludes that the cited section is
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`“admitted prior art” and “admitted to be one of the problems of known systems and
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`methods.” Petition, Paper 1 at 5. Petitioner’s conclusory statements cannot
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`substitute for the required explanation as to why the quoted passage qualifies as
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`“admitted prior art.” Here, Petitioner improperly characterizes the problem to be
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`2 Declaration, Exhibit 1012, Appendix B, Ground 1 (claim elements 1(a) (B-
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`3), 1(b) (B-5), 1(c) (B-5), claim 5 (B-10), claim 7 (B-10 – B-11), claim elements
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`11(a) (B-12), 11(b) (B-12), 11(c) (B-13), claim 15 (B-13) and claim 16 (B-14));
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`Ground 4 (claim 5 (B-63), claim 7 (B-64 – B-65), claim 15 (B-65) and claim 19
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`(B-65 - B-66)).
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`Case No. IPR2014-01405
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`solved as “admitted prior art.” While the above quotation may appear in the
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`Background section of the ‘770 Patent, it appears at the end of the Background
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`section and acts as the transition to the discussion of the inventive solution of the
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`‘770 Patent and its accompanying detailed embodiment of the specification.
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`Moreover, by its context as a transitional bridge between the background and the
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`inventive solution, it describes the problem to be solved and is therefore itself a
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`non-obvious inventive aspect of the disclosure, not an admission of prior art.
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`The published priority date of the ‘770 Patent is July 2, 1997, when the USB
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`standard was still in its infancy and relatively few knew all the details of the USB
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`standard or the new technology’s shortcomings. The Background section of the
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`‘770 Patent even notes that USB was “a new emerging technology” at the time.
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`Exhibit 1001 at 1:50-52. In the lead up to the section pointed to by Petitioner as
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`“admitted prior art”, the ‘770 Patent states that altering the configuration of a
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`peripheral device required that the host computer detect a disconnection and then a
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`reconnection. Id. at 1:61-65. However, the patent further notes that such detection
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`requires that the USB cable be physically disconnected and reconnected to the host
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`computer. Id. at 2:20-23. A problem to be addressed by the patent is how to alter
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`the configuration of a peripheral device while the host computer and peripheral
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`device remain connected by providing for the detection of a disconnection and then
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`a reconnection of the peripheral devices. Id. at 2:24-28. The portion of the
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`Case No. IPR2014-01405
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`Background section that Petitioner characterizes as “admitted prior art” is actually
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`a recognition of this previously unknown problem with the USB standard: how to
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`accomplish the disconnection and reconnection of a peripheral device in order to
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`reconfigure the peripheral device without actually physically disconnecting and
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`reconnecting the USB cable.
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`The recognition of the problem to be solved is not admitted prior art. “Often
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`the inventive contribution lies in defining the problem in a new revelatory way.”
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`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed Cir. 2012). Petitioner
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`attempts to side step the required proof of invalidity by incorrectly labeling the
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`novel problem discovered by the patentee as admitted prior art. Petitioner must
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`prove that a person of ordinary skill in the art at the time of the invention would
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`have recognized the problem of providing for a disconnection and reconnection of
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`a peripheral device while the peripheral device remains physically connected to the
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`host computer to reconfigure the peripheral device to show that patentee’s
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`disclosure in this case is invalidating “admitted prior art.” This is consistent with
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`the test presented in KSR, that solutions to a problem cannot be “obvious to try” if
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`the problem itself is not known or obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398, 420-421 (U.S. 2007). Petitioner has failed to show in the Petition or
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`Declaration that the problem identified by the Background section of the ‘770
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`Patent was “known” or “obvious” to a person skilled in the art at the time of the
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`Case No. IPR2014-01405
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`invention. Therefore, Petitioner’s designation of the problem to be solved as
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`“admitted prior art” is incorrect, and for this additional reason, Grounds 1, 2 and 4,
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`which rely on this mischaracterization, should be rejected.
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`Furthermore, the Board should reject Petitioner’s citation to the prosecution
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`of a “counterpart” European Patent Application as evidence of an admission of
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`prior art. Petition, Paper 1 at 21. Petitioner cites to no statute or case law that
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`compels the Board to consider the drafting of claims in a “two-part” form in
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`accordance with purported European Union standards as an admission on the part
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`of Patent Owner in a U.S. Patent as to what may constitute “admitted prior art.”
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`B.
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`Patent Owner intends to swear behind the Yap reference
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`As Petitioner notes, Patent Owner may swear behind the Yap reference, the
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`additional USB
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