Petitioner Microsoft’s Reply
`
`
`Paper No. 27
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`BISCOTTI INC.
`Patent Owner
`
`Patent No. 8,144,182
`Issued: March 27, 2012
`Filed: September 16, 2009
`Inventors: Matthew B. Shoemake and Nadeem Ahmed
`Title: REAL TIME VIDEO COMMUNICATIONS SYSTEM
`
`___________________
`Case IPR2014-01458
`
`
`
`
`
`
`
`
`
`PETITIONER MICROSOFT’S REPLY
`
`________________________
`
`
`
`
`
`
`
`
`
`
`Paper No. 27
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`BISCOTTI INC.
`Patent Owner
`
`Patent No. 8,144,182
`Issued: March 27, 2012
`Filed: September 16, 2009
`Inventors: Matthew B. Shoemake and Nadeem Ahmed
`Title: REAL TIME VIDEO COMMUNICATIONS SYSTEM
`
`___________________
`Case IPR2014-01458
`
`
`
`
`
`
`
`
`
`PETITIONER MICROSOFT’S REPLY
`
`________________________
`
`
`
`
`
`
`
`
`
`Petitioner Microsoft’s Reply
`
`I.
`
`Kenoyer Discloses All the Elements of Claim 6
`A. Kenoyer Discloses the Claimed Input Interfaces
`Claim 6 requires audio and video input interfaces “to receive” input from a set
`
`top box (“STB”). Ex. 1001 at 32:64-67. It does not require interfaces “typically”
`
`used to connect a STB, as Patent Owner suggests. See Resp., 22. Kenoyer
`
`discloses a codec with multiple audio and video interfaces that can connect to a
`
`STB, teaches connecting an STB to the codec and, in Figure 5, shows multiple
`
`audio and video input interfaces through which such a connection may be made.
`
`Pet., 17-18; Ex. 1003 ¶¶95, 234; Ex. 1006, Fig. 5, 8:56-9:34.1 Despite Patent
`
`Owner’s suggestion otherwise, Kenoyer’s disclosure of the codec’s functionality in
`
`one paragraph and the codec’s interfaces in another is sufficient to satisfy the
`
`claim. Ex parte Luck, 28 U.S.P.Q.2d 1875-76.
`
`Patent Owner ignores that claim 6 requires only an “interface” (Resp., 21), i.e.,
`
`“the point at which a connection is made between two elements so that they can
`
`1 Kenoyer also discloses other input interfaces for the codec that are capable of
`
`receiving audio and video from a STB. Pet., 13-14; Ex. 1003 ¶81; Ex. 1006, 9:29-
`
`34; Ex. 1052 (Houh Reply Dec.), ¶12, 30, 39; Ex. 1050 (July 30, 2015, Bovik Dep.
`
`Tr.), 32:3-21. Kenoyer also discloses “coupl[ing]” the codec to the STB. Pet., 16,
`
`citing Ex. 1006, 10:25-30; 1:65-2:1. Kenoyer then describes multiple video and
`
`audio interfaces for that coupling. Ex. 1006, 11:2-4; Fig. 7b.
`
`
`
`
`
`Petitioner Microsoft’s Reply
`
`work with each other or exchange information.” Ex. 1005 (Microsoft Computer
`
`Dict.), at 279-80; Ex. 1050 (July 30, 2015 Bovik Dep. Tr.), 56:1 – 57:6. When
`
`Kenoyer discloses “coupling” (i.e., connecting) the STB and the codec, it discloses
`
`an “interface” – i.e., a point at which those devices can connect.
`
`Patent Owner also focuses improperly on one embodiment to argue that Fig. 5
`
`shows interfaces from the codec to a computer, not to a STB (Resp., 22), ignoring
`
`that Kenoyer also teaches connecting the codec to a STB. Pet. 13-14; Ex. 1006,
`
`1:65-2:1, 10:25-28. Indeed, Patent Owner implicitly concedes the VGA port of Fig.
`
`5 can connect to a STB, by arguing only that VGA “is not ordinarily used for
`
`transmission of a cable or satellite signal.” Resp., 22; Ex. 2006 ¶81. The evidence
`
`shows STBs with VGA outputs that could interface with Kenoyer’s “VGA In.”
`
`See Ex. 1052, ¶25-29; Ex. 1055, ¶ 5; Ex. 1055, 6:51-61; Ex. 1046 at 7, 9, 11; Ex.
`
`1047 at 15, 21; Ex. 2012 at 42; Ex. 1033 at 63; Ex. 1050, 79:2-9.
`
`Patent Owner also argues that Kenoyer “fails to identify whether the ‘pass-
`
`through’ content consists of both audio and video, or only one of the two.” Resp.,
`
`13; see also id. at 15. But the “regular programming/games” disclosed in Kenoyer
`
`includes both audio and video. Ex. 1052, ¶32, 42; Ex. 1006, 11:2-4 (STB with
`
`audio and video output interfaces); also, Ex. 1009 at 2 (TV with audio and video
`
`inputs for STB); Ex. 2013 at 11 (same); Ex. 2012 at 14 (same); Ex. 1033 (Briere)
`
`at 73 (“you also need some separate cables to carry the audio signals that
`
`
`
`2
`
`
`
`Petitioner Microsoft’s Reply
`
`correspond with your TV video”). Indeed, Biscotti’s expert agrees that
`
`“programming” includes both video and audio. See, e.g., Ex. 1050, 14:2-21
`
`(video); id., 15:3-16 (audio).
`
`In addition, the claim requires just an audio “interface,” and Fig. 5 shows audio
`
`input interfaces, including “microphone-in 513” and “alternate input 315.” Ex.
`
`1003, ¶235. And Kenoyer describes the STB as both coupled to the codec and
`
`having “audio ports (e.g., audio ports 713a-b ).” Ex. 1006, 11:3-4. Kenoyer also
`
`explains that in some embodiments the audio interfaces of its codec are “Radio
`
`Corporation of America (RCA) (L+C+R analog) input,” Ex. 1006, 12:62-66; see
`
`Ex. 1003 ¶81, which is a typical audio input interface, see Ex. 1052, ¶39; Ex. 1050,
`
`39:4-12, 114:4-8, and one which the ’182 patent explicitly says can be an audio
`
`input interface, see Ex. 1001, 10:24-26; id., 10:41-47.
`
`B. Kenoyer Discloses The Claimed Audio Output Interface
`Claim 6 requires “an audio output interface to provide audio output to an audio
`
`receiver”. The claim does not require an audio receiver, as Patent Owner suggests,
`
`but instead requires only an interface to an audio receiver, and Kenoyer discloses
`
`several, including a headphone jack, Ex. 1006 at Fig. 5; Ex. 1052, ¶44, 48, and a
`
`“RCA output,” Ex. 1003 ¶81; Ex. 1006, 12:67-13:3; Ex. 1052, ¶44, 49.
`
`Patent Owner also mistakenly interprets an “audio receiver” as a home theater
`
`“stereo receiver.” Resp., 16. That definition is inconsistent with the ’182 patent,
`
`
`
`3
`
`
`
`Petitioner Microsoft’s Reply
`
`where an audio receiver is alternatively described as internal to a display, Ex.
`
`1001, 10:59-64, & claim 17.2 This, under the broadest reasonable interpretation
`
`consistent with the specification, the claim requires an interface to something that
`
`receives audio–an “audio receiver,” such as the speaker port and RCA output
`
`disclosed by Kenoyer. Pet., 15; Houh Tr. at 148:19-25.
`
`In any event, the headphone jack of Kenoyer’s Fig. 5 is a common audio
`
`interface to a stereo receiver. Ex. 1052, ¶48; Ex. 1048 at 16, 23 (receiver with
`
`headphone jack for input); Ex. 1056, 1:34-38; Ex. 1057, ¶ 5 (headphone jack input
`
`in car audio receivers). The “RCA output” of Kenoyer’s codec is also a typical
`
`interface to a stereo receiver, Ex. 1003 ¶ 81; Ex. 1052, ¶49, and one which the ’182
`
`patent explicitly says can be an audio output interface, Ex. 1001, 10:24-27.
`
`C. Kenoyer Discloses The Claimed Storage Medium
`Claim 6 also requires a “storage medium” having encoded thereon certain
`
`computer instructions, Ex. 1001, 33:9-25, which Kenoyer discloses through its
`
`description of functionality and its later statement that “[e]mbodiments of a subset
`
`or all (and portions or [sic] all) of the above may be implemented by program
`
`
`2 Biscotti incorrectly argues that Dr. Houh’s deposition testimony limits this term
`
`to home theater stereo receivers because that interpretation is inconsistent with the
`
`‘182 patent’s specification.
`
`
`
`4
`
`
`
`Petitioner Microsoft’s Reply
`
`instructions stored in a memory medium or carrier medium and executed by a
`
`processor.” Ex. 1006 at 15:21-24; Pet. at 18-21. Patent Owner contends this
`
`passage refers only to a few of the immediately preceding paragraphs, and not to
`
`the earlier described functionality of Kenoyer. Resp., 26-28. The passage,
`
`however, literally refers to the entire disclosure by using the phrase “a subset or all
`
`… of the above.” See Ex. 1052, ¶53; Ex. 1006, 15:21-24. Indeed, the same column
`
`later notes that “[f]urther modifications and alternative embodiments of various
`
`aspects of the invention may be apparent to those skilled in the art in view of this
`
`description.” Ex. 1006, 15:55-57. The statement that “further” modifications of
`
`aspects of “the invention” confirms that the earlier passage in column 15 refers to
`
`the disclosure as a whole, not just to the top of column 15. Patent Owner also
`
`contends that a “handle for carrying the videoconferencing system or a fan for
`
`cooling its components” could be the disclosed instructions. Resp., 28-29. But the
`
`average artisan would know that a “handle” or “fan” would not be implemented in
`
`program instructions and Kenoyer’s statement is not fairly interpreted to mean that
`
`such ordinary structures would be implemented in computer instructions. Ex. 1052,
`
`¶57, Ex. 1050 223:22 – 227:17. 3
`
`3 Patent Owner repeats this argument for some dependent claims with
`
`“instructions” elements, Resp., 36-37, 39-41, 44, 45, 47 and is wrong with respect
`
`to those claims for the same reasons demonstrated here. Kenoyer teaches
`
`
`
`5
`
`
`
`Petitioner Microsoft’s Reply
`
`D. Kenoyer Discloses Instructions For Encoding And Transmitting
`Kenoyer discloses both using (1) the Internet Protocol (IP) to encode and
`
`transmit data and (2) transmitting the encoded audio and video. Ex. 1006, Fig. 5,
`
`4:17-27, 8:10-15, 9:27-28, 15:8-20; Ex. 1003, ¶¶246-47. Specifically, Kenoyer’s
`
`description of the codec using an IP interface discloses encoding into packets for
`
`transmission. Pet., 20-21; Ex. 1006 at Ex. 1006, Fig. 5, 8:10-14, 8:56-9:34, 9:27-
`
`28; Ex. 1050, 144:4 – 148:2. And Kenoyer discloses transmitting audio and video,
`
`which it previously disclosed as encoded using IP. Pet. at 21; Ex. 1003, ¶246-47;
`
`Ex. 1006, 15:11-12. Kenoyer need not disclose both within one paragraph to
`
`satisfy the claim, Ex parte Luck, 28 U.S.P.Q.2d 1875-76, and Petitioner is not
`
`solely relying on inherency as Patent Owner suggests.
`
`Patent Owner argues that Kenoyer discloses networks that might not use IP
`
`(Resp., 31), which is irrelevant because Kenoyer specifically discloses
`
`embodiments that use IP rather than these alternate network types. Ex. 1003 ¶246;
`
`Ex. 1050, 144:10-20, 145:4-21. Patent Owner also argues that the “IP link [is]
`
`connected to a computer system 355, and not to the codec 309” (Resp., 31),
`
`ignoring that the IP link can connect the codec directly to a network. Ex. 1006,
`
`
`implementing all codec-related functionality as instructions. See Ex. 1006 at 15:21-
`
`24.
`
`
`
`6
`
`
`
`Petitioner Microsoft’s Reply
`
`8:11-15. Patent Owner further contends that “Kenoyer only discloses that ‘signals
`
`may be sent/received through a network connection 351,’ without disclosing which
`
`signals are transmitted by IP.” Resp., 31. But Kenoyer teaches processing and
`
`sending audio and video signals over the network connection: “the local video and
`
`audio may be processed in codec 309 for transmission to a remote conference site,”
`
`Ex. 1006, 15:11-14; see also Fig. 22; 5:55-64, 8:10-14, which it elsewhere explains
`
`uses IP in some embodiments, Ex. 1006, 8:10-15; Ex. 1003, ¶246.
`
`II. Claim 7
`Kenoyer discloses receiving signals transmitted by a remote control. Pet. at 22;
`
`Ex. 1003, ¶ 250. Patent Owner, however, contends that Kenoyer does not disclose
`
`a “remote control receiver” because Kenoyer could (hypothetically) use something
`
`else to receive signals from the remote control. Resp., 32. But under the broadest
`
`reasonable interpretation, whatever circuitry receives signals from the remote
`
`control would be a “remote control receiver,” i.e., something that receives signals
`
`from a remote control. See, e.g., Ex. 1052, ¶66-67. Moreover, Kenoyer discloses a
`
`“wireless remote sensor” that works with a “wireless remote,” Ex. 1006, 8:39-42,
`
`which is also a “remote control receiver.” See, e.g., Ex. 1052, ¶68.
`
`III. Claim 18
`Patent Owner argues that Kenoyer does not disclose a “a high-definition
`
`television,” only an “HD display.” Resp., 33. But, claim 18, via parent claim 6,
`
`
`
`7
`
`
`
`Petitioner Microsoft’s Reply
`
`does not require a HDTV, only an “interface” to a HDTV. Compare Ex. 1001 at
`
`32:64-65 and 33:61-62. Patent Owner never explains how the interfaces would
`
`differ for an HDTV from those disclosed for the HD display, see, e.g., Resp. at 33,
`
`which it admits Kenoyer discloses, Ex. 1050, 50:3-20. Indeed, Patent Owner’s
`
`exhibit confirms that a VGA output (like in Kenoyer) is a HDTV interface because
`
`it shows HDTVs with VGA inputs (Ex. 2013 at 16) that can receive content from a
`
`VGA output like Kenoyer’s. see, e.g., Ex. 1006, 9:9-12; Ex. 1050, 79:2-9; Ex.
`
`1052, ¶72-77. And Kenoyer discloses outputting to an HDTV, which requires an
`
`HDTV interface. See, e.g., Ex. 1006 at 5:39-40; Ex. 1052, ¶71. As does
`
`incorporated by reference Ex. 1014. See, e.g., Ex. 1014, ¶ 0010; Ex. 1052, ¶71.
`
`IV. Claim 21
`The Petition demonstrated that Kenoyer discloses a video communication
`
`device implemented using a personal computer with a video chat application. Pet.
`
`at 26. Patent Owner argues that the computer only encodes and decodes, and thus
`
`asserts that Kenoyer is missing the video chat application. Resp., 34. Kenoyer,
`
`however, discloses that "[t]he codec functionality (along with other functionality
`
`of the MCVCS 300) may be included in the camera base 601 and/or computer
`
`system 355.” Pet., 26, quoting Ex. 1006 at 9:59-61 (emphasis added), see, e.g., Ex.
`
`1052, ¶81. Kenoyer also discloses that a computer can implement the entire
`
`functionality of the codec. See Pet., 26-27 (citing Ex. 1006, 9:59-61, 15:21-24; Ex.
`
`
`
`8
`
`
`
`Petitioner Microsoft’s Reply
`
`1003, ¶¶ 94, 100, 288-289). Thus, Kenoyer discloses the claimed chat application.
`
`V. Claim 23
`Patent Owner argues that Kenoyer does not disclose the “private content
`
`delivery network” of claim 23, but Kenoyer discloses transmitting audio/video
`
`over a non-public network (Pet., 27-28), which meets the broadest reasonable
`
`interpretation of “a private content delivery network.” Pet., 27-28, 6-8. Kenoyer
`
`also teaches “a private network for delivering content” in the form of cable
`
`networks (Ex. 1006, 4:24), corporate networks (Ex. 1010, 3:27-34)4, and local area
`
`networks (Id.), each of which are also “private content delivery network” under the
`
`broadest reasonable construction. Ex. 1003, ¶296; see Ex. 1052, ¶¶86-89, _ Patent
`
`Owner says that a “private content delivery network” “typically consists of a
`
`network of servers with the purpose of delivering content, designed for high-speed
`
`4 Exhibit 1006 incorporates Exhibit 1010 by reference. Pet., 13-14 (citing Hariri v.
`
`Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011). In Hariri, “[t]he disclosures of the two
`
`applications are hereby incorporate[d] by reference” “unequivocal[ly]”
`
`incorporated the references in their entirety. 656 F.3d at 1335. Kenoyer expressly
`
`incorporates Ex. 1010 (and others) in their “entirety.” See Ex. 1006, 3:40-61.
`
`Patent Owner relies on an older, unpublished district court opinion rather than later
`
`Federal Circuit precedent. Resp., 8 (citing SkinMedica, Inc. v. Histogen, Inc., 2011
`
`WL 2066619 at *7 (S.D. Cal May 24, 2011)).
`
`
`
`9
`
`
`
`Petitioner Microsoft’s Reply
`
`content delivery.” Resp., 37. This definition, however, ignores the claim itself
`
`because it would cover a public “network of servers.”
`
`VI. Claim 50
`Patent Owner contends that Kenoyer’s disclosed compression standards do not
`
`“necessarily include[] the claimed instructions." Resp., 41. But Kenoyer expressly
`
`discloses using the H.261, H.263, and H.264 compression standards to process
`
`video data, as claimed. See Pet., 34; Ex. 1006, 4:60-64; Ex. 1050, 133:2-1; Ex.
`
`1003, ¶¶ 108, 426. And these compression standards “process[]” video data as
`
`claimed. Ex. 1050, 135:16-19. Moreover, this processing occurs before the
`
`encoding into IP packets. Ex. 1003, ¶ 426; Pet., 34. And Kenoyer discloses
`
`implementing “all” of its functionality in program instructions. Ex. 1006, 15:21-24.
`
`VII. Claims 52, 53
`For these claims, Patent Owner repeats its arguments for parent claim 6.
`
`Because Kenoyer anticipates claim 6, it anticipates these claims as well.
`
`VIII. Claim 22
`For claim 22, the Board instituted under Sections 102(e) (Kenoyer) and 103
`
`(Kenoyer and the Internet Protocol). Kenoyer discloses transmitting over the
`
`Internet (Ex. 1006, 4:33-34) and using the Internet Protocol (IP), which includes
`
`packetizing data for transmission over the Internet. Ex. 1015, at 1; Ex. 1003, ¶ 294.
`
`Kenoyer also discloses transmitting audio and video data. Ex. 1003, ¶ 246-47; Ex.
`
`1006, 15:11-12. These disclosures do not need to be in the same paragraph, as
`
`
`
`10
`
`
`
`Petitioner Microsoft’s Reply
`
`Patent Owner suggests. Ex parte Luck, 28 U.S.P.Q.2d 1875-76.
`
`Because Kenoyer teaching using IP, combining Kenoyer with Ex. 1015, which
`
`defines the Internet Protocol, would have been obvious. The IP protocol discloses
`
`packetizing data and transmitting it over the Internet. Ex. 1015, at 1; Ex. 1003, ¶
`
`294. Although Patent Owner argues that “Kenoyer also does not disclose that the
`
`IP link transmits the audio and video stream” (Resp., 43), Kenoyer discloses both
`
`transmitting audio and video and using the IP protocol to transmit data, as
`
`explained above. Ex. 1003, ¶¶246-47, 294; Ex. 1006, 15:11-12.
`
`IX. Claim 39
`Patent Owner does not dispute that Asmussen (Ex. 1008) discloses the claimed
`
`audio mixing. Resp. 44-46. Patent Owner’s arguments about Kenoyer alone (Resp.,
`
`46; also 45) are therefore irrelevant because Asmussen adds audio mixing to the
`
`combination underlying this ground. See Paper No. 10 at 24-26; Pet. at 39-40. Both
`
`Asmussen and Kenoyer disclose displaying conferencing and STB video on the
`
`screen simultaneously, allowing the combination where Asmussen adds mixing
`
`audio. Ex. 1003 ¶¶369-72; Ex. 1006, 10:28-30; Ex. 1008, 50:44-54, 55:5-59:6.
`
`One of skill in the art, if combining video streams as in Kenoyer, would look to
`
`other art that also mixes video streams, such as Asmussen, for how to mix the
`
`associated audio. Ex. 1003, ¶¶369-72. Moreover, both references are in the same
`
`field, in that both describe both video conferencing and STBs and are in the “video
`
`
`
`11
`
`
`
`Petitioner Microsoft’s Reply
`
`communications” field. See, e.g., Ex. 1003, ¶370; Ex. 1008, 50:44-54, 55:5-59:6;
`
`Ex. 1006, 7:59-60.
`
`Patent Owner argues that Kenoyer “teaches away” from this combination.
`
`Resp. at 45. Kenoyer combines video streams but is silent about the associated
`
`audio streams, see, e.g., Ex. 1006, 10:28-30, (as Patent Owner’s expert admits, see
`
`Ex. 2006, ¶ 202). Mentioning video but not audio, however, is not teaching away
`
`from mixing audio, since a mere failure to mention is not “teaching away”.
`
`X. Claims 42, 44, and 45
`Patent Owner argues again that Kenoyer does not incorporate Ex. 1010 by
`
`reference, which is refuted above. See supra § V n.1. Patent Owner also tries to
`
`differentiate Ex. 1010 alone (Resp., 47) even though the Board did not institute on
`
`Ex. 1010 alone, and Patent Owner does not dispute that the combination on which
`
`the Board did institute discloses all claim elements.
`
`Patent Owner instead argues against combining Kenoyer with Ayoub (Ex.
`
`1024), asserting they are not in the same field of endeavor. Resp., 48. Both
`
`references, however, relate to, or are at least reasonably pertinent to, the field of
`
`video and audio communications, as is the ‘182 patent. Ex. 1024, ¶ 0007, 0048 (“a
`
`device of the present disclosure includes broadly any electronic device that
`
`provides voice, video or data communication or presentations”); Ex. 1001 at 1:31-
`
`33; Ex. 1006 at 1:21-24; Ex. 1003, ¶392. Kenoyer describes audio with video, and
`
`
`
`12
`
`
`
`Petitioner Microsoft’s Reply
`
`one of skill in the art would look to other sources for how to configure that audio,
`
`like Ayoub. Kenoyer (via incorporated Ex. 1011, 3:40-43) also discloses detecting
`
`issues with audio playback, which Ayoub does as well. . See Ex. 1003, ¶¶391-92.
`
`Patent Owner cites Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314,
`
`1314 (Fed. Cir. 2011) (Resp., 49), but that case held that the district court erred by
`
`not considering a secondary reference not in the same field of endeavor. Id. at
`
`1322. It is incorrect to “assum[e] that a person of ordinary skill attempting to solve
`
`a problem will be led only to those elements of prior art designed to solve the same
`
`problem.” KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007). Kenoyer
`
`suggests that a videoconferencing device would want to evaluate its audio
`
`playback components, and is properly combined with Ayoub and Yoshino, which
`
`teach evaluating audio components.
`
`XI. Secondary Indicia
`A.
`Patent Owner Misstates When Petitioner Must Respond to
`Secondary Indicia Arguments
`
`The Board has rejected Patent Owner’s argument (Resp., 48) that Petitioner
`
`must address secondary indicia in the Petition. See, e.g., Petroleum Geo-Servs. v.
`
`Western Geco L.L.C., IPR2014-01475, Paper 18 at 27-28 (PTAB Mar. 17, 2015);
`
`Sega of America, Inc., et al. v. Uniloc USA, Inc., et al., IPR2014-01453, Paper 11
`
`at 20 (PTAB Mar. 10, 2015). The Board has also stated Omron case cited by Patent
`
`Owner does not stand for that proposition. See, e.g., Owens Corning v.
`
`
`
`13
`
`
`
`Petitioner Microsoft’s Reply
`
`CertainTeed Corp., IPR2014-01403, Paper 10 at 16 (PTAB Mar. 9, 2015).
`
`Petitioner may therefore rebut Patent Owner’s secondary considerations
`
`arguments. See, e.g., Owens Corning, IPR2014-01403, paper 10 at 16; Chums,
`
`Inc., IPR2014-01240, paper 10 at 7-8.
`
`B.
`
`Patent Owner Fails To Show Any Nexus Between the Claims and
`Petitioner’s Xbox One Product
`
`The Board instituted on claims 22, 39, 42, 44, and 45 under 35 U.S.C. § 103.
`
`Patent Owner makes no attempt to show that Xbox One (X1) falls within claims
`
`22, 39, 44, and 45 and thereby fails to show any nexus between X1 and these
`
`claims. And for claim 42, Patent Owner fails to show the elements of parent claim
`
`6 in X1, instead just baldly stating that X1 has the “instructions for” elements.
`
`Resp., 54. Patent Owner also does not show that X1 practices claim 42’s other
`
`parent, claim 41. Resp., 54-55. Patent Owner cannot show the nexus necessary to
`
`show copying or commercial success for claim 42.
`
`Patent Owner’s Commercial Success Argument Fails
`
`C.
`Patent Owner’s commercial success contention also fails because it provides no
`
`evidence comparing X1 sales to its overall market. In re Applied Materials, Inc.,
`
`692 F.3d 1289, 1300 (Fed. Cir. 2012). And Even if Patent Owner had shown that
`
`claims 22, 39, 42, 44, and 45 cover X1, it must still show that these claims’
`
`allegedly novel elements are responsible for X1’s commercial success. See,
`
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F. 2d 1387, 1392 (Fed.
`
`
`
`14
`
`
`
`Petitioner Microsoft’s Reply
`
`Cir. 1988). And “the asserted commercial success of the product must be due to the
`
`merits of the claimed invention beyond what was readily available in the prior art.”
`
`J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir.
`
`1997). Patent Owner identifies no evidence that X1’s commercial success relates to
`
`any features allegedly corresponding to claim 42. Nor does it do so for claims 22,
`
`39, 44, and 45, which it never even tries to show cover X1.
`
`Patent Owner’s Copying Argument Fails
`
`D.
`Patent Owner identifies no nexus between the alleged copying and the
`
`allegedly novel elements in claims 22, 39, 42, 44, and 45. MotivePower, Inc. v.
`
`Cutsforth, Inc., IPR2013-00274, paper 31 at 30 (PTAB Oct. 30, 2014). Patent
`
`Owner fails to identify what functionality Petitioner allegedly copied, much less
`
`demonstrate any nexus to the allegedly novel elements of claims 22, 39, 42, 44,
`
`and 45. See id. Even more importantly, Patent Owner never shows that its
`
`commercial products contains any novel elements of claims 22, 39, 42, 44, and 45
`
`(or any other claim). See Resp., 57-58. As such, there is no evidence that Petitioner
`
`copied any patented functionality of Patent Owner’s product.
`
`Dated: August 19, 2015
`
`
`
`
`
`Respectfully Submitted,
`
`Joseph Micallef/
`Joseph Micallef
`Registration No. 39,772
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`
`
`
`
`
`15
`
`
`
`Petitioner Microsoft’s Reply
`
`
`
`PETITIONER MICROSOFT’S REPLY
`
`
`
`Attachment A:
`
`Proof of Service of the Reply
`
`
`
`16
`
`
`
`
`
`
`
`
`
`Petitioner Microsoft’s Reply
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 19th day of August 2015, a copy of this Reply,
`
`including all attachments, appendices and exhibits, has been served in its entirety
`
`by E-mail on the following counsel of record for patent owner:
`
`Amanda Hollis
`Kirkland & Ellis LLP
`300 North LaSalle
`Chicago, IL 60654
`amanda.hollis@kirkland.com
`
`Adam Alper
`Kirkland & Ellis LLP
`555 California Street
`San Francisco, CA 94104
`adam.alper@kirkland.com
`
`Michael W. De Vries
`Kirkland & Ellis LLP
`333 South Hope Street
`Los Angeles, CA 90071
`michael.devries@kirkland.com
`
`
`Dated:
`
`August 19, 2015
`
`
`
`
`
`
`
`17
`
`Respectfully submitted,
`
`/Joseph Micallef/
`Joseph Micallef
`Registration No. 39,772
`Attorney for Petitioner
`
`
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
