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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SkyHawke Technologies, LLC
`Petitioner
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`v.
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`L&H Concepts, LLC
`Patent Owner
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`Case IPR2014-00437
`Patent 5,779,566
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`PATENT OWNER L&H CONCEPTS, LLC’S
`PRELIMINARY RESPONSE
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`SKYHAWKE Ex. 1031, page 1
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`TABLE OF CONTENTS
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`Introduction ........................................................................................................ 1
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`I.
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`II. Statement of Relief Requested ........................................................................... 3
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`III. Claim Construction ............................................................................................ 3
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`A. The Preambles Are Limitations ............................................................... 4
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`B. Petitioner misconstrues “providing a pre-game mode of data
`entry … and providing a choice of at least one of a plurality of
`game-interactive information screens” .................................................... 7
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`IV. The Board Should Not Institute Petitioner’s Redundant Challenges .............. 11
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`A. The Board’s Precedent Requires Petitioner to Distinguish
`Between Otherwise Redundant Prior Art References ........................... 12
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`B. Petitioner’s Statement of Non-Redundancy Establishes that the
`Ultra Golf Reference is the Stronger Ground ........................................ 13
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`C. Petitioner is Correct that the Palmer-Based Challenges Do Not
`Disclose the Claimed Information Screens ............................................ 14
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`D. The Challenges to Claim 18 are Doubly Redundant ............................. 16
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`V. Conclusion ........................................................................................................ 17
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`i
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`SKYHAWKE Ex. 1031, page 2
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`
`LIST OF EXHIBITS1
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`2002
`2003
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`2004
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`2005
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`Exhibit No. Description
`Berk-Tek LLC v. Belden Technologies Inc., IPR2013-00057 (Paper
`2001
`21, May 14, 2013)
`In re Morris, 127 F.3d 1048 (Fed. Cir. 1997)
`NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir.
`2005)
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801
`(Fed. Cir. 2002)
`Novatek, Inc. v. Sollami Co., No. 2013-1389, 2014 U.S. App.
`LEXIS 5512 (Fed. Cir. Mar. 26, 2014)
`ʼ566 patent prosecution history, May 27, 1997 Office Action
`Response
`Sony Corp v. Yissum Research Development Co. of the Hebrew
`Univ. of Jerusalem, IPR2013-00219 (Paper 33, Nov. 21, 2013)
`Liberty Mutual Ins. Co. v. Progressive Casualty Co., CBM2012-
`00003 (Paper 7, Oct. 25, 2012)
`Oracle Corp. v. Patent of Clouding IP, LLC, IPR2013-00075
`(Paper 15, June 13, 2013)
`
`2006
`
`2007
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`2008
`
`2009
`
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`1 Consistent with 37 C.F.R. §§ 42.6(c)-(d), none of these cited exhibits are already
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`in the record.
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`ii
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`SKYHAWKE Ex. 1031, page 3
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`Pursuant to 37 C.F.R. § 42.107(a), the patent owner, L&H Concepts, LLC
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`(“L&H” or “Patent Owner”), hereby submits the following Preliminary Response
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`in response to the Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
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`5,779,566 (“the ʼ566 patent”) numbered IPR2014-00437 (the “00437 Petition”),
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`filed by SkyHawke Technologies, LLC (“SkyHawke” or “Petitioner”).
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`I.
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`INTRODUCTION
` Inter partes review is a forum—much like the original examination—
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`where the PTO can consider the best and most comprehensive prior art and
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`determine whether or not the claims are allowable. Instituting inter partes review
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`on “multiple grounds without meaningful distinction by the petitioner is contrary to
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`the legislative intent [of the AIA].” Berk-Tek LLC v. Belden Technologies Inc.,
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`IPR2013-00057 (Paper 21, May 14, 2013), Ex. 2001 at 5.
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` Petitioner is seeking (at least) a double review of the claims of the ’566
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`patent, with only conclusory language to support its assertion of non-redundancy.
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`Petitioner reasonably could have limited its challenge of the claims of the ’566
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`patent to a single petition2 but chose not to, instead using twice the pages and twice
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`(and, for one claim, thrice) the reference combinations in hopes of invalidating
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`2 IPR2014-00438 also addresses claims of the ’566 patent based on the same
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`references.
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`1
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`SKYHAWKE Ex. 1031, page 4
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`
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`claims which have already been recognized as valid
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`through ex parte
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`reexamination.
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`L&H is confident in the validity of the challenged claims of the ’566 patent
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`and believes the Board will reaffirm the prior decisions of the Patent Office.
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`However, in keeping with the stated purpose of the IPR procedure—i.e., the
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`congressional mandate of “just, speedy, and inexpensive resolution”—L&H
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`requests that any additional review of the ’566 patent by the Board be conducted
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`efficiently, if at all. Accordingly, L&H files this preliminary response to
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`demonstrate to the Board the redundancy of the grounds asserted in the 00437
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`Petition, and to suggest a more appropriate review of the challenged claims.3
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`In particular, Petitioner’s reliance on the combination of the Palmer and
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`Vanden Heuvel references is misplaced. As described further below, even
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`Petitioner concedes that the combination of Palmer and Vanden Heuvel is less
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`complete (and thus inferior) to Petitioner’s assertions based on the Ultra Golf
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`reference. Accordingly, to the extent that inter partes review should be considered
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`3 No adverse inference should be drawn from Patent Owner’s discussion of the
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`comparative strength of the base references with regard to institution of this IPR.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764, § II-C (Aug.
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`14, 2012).
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`2
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`SKYHAWKE Ex. 1031, page 5
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`at all, it should be focused on the Ultra Golf combination (the alleged more
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`complete grounds) to enable the most efficient and complete resolution.
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`II.
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`STATEMENT OF RELIEF REQUESTED
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` Patent Owner respectfully requests that this Board deny this Petition for
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`IPR of the ’566 patent with regard to claims 8-11, 14, and 18 (at least as to the
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`Palmer-based grounds). If the Board institutes at all, the institution should be
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`limited to the Ultra Golf related grounds (subsection VII(D) of the Petition).
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`III. CLAIM CONSTRUCTION
`The Patent Office’s policy is to give the claims of a duly granted patent in a
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`review proceeding their “broadest reasonable interpretation.”4 Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012). It is important to
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`note that such an interpretation must be reasonable; in fact, it must be reasonable in
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`light of the relevant intrinsic evidence, including the specification. In that context,
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`the broadest reasonable interpretation of claim language is the “meaning of the
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`words in their ordinary usage as they would be understood by one of ordinary skill
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`in the art, taking into account whatever enlightenment by way of definitions or
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`otherwise that may be afforded by the written description contained in the
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`4 The Patent Owner reserves all rights to argue, if necessary, that the broadest
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`reasonable interpretation standard should not be employed during litigation.
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`3
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`SKYHAWKE Ex. 1031, page 6
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997)
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`(Ex. 2002). See M.P.E.P. 2111.01 (“The Words of A Claim Must Be Given Their
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`“Plain Meaning” Unless Such Meaning Is Inconsistent With The Specification”).
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`A. The Preambles Are Limitations
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`The Petition fails to provide any analysis to support its assertion that the
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`preambles of claims 8, 9, 14, and 18 are not limiting. A preamble is generally
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`construed to be limiting if it “recites essential structure or steps, or if it is necessary
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`to give life, meaning, and vitality to the claim.” NTP, Inc. v. Research In Motion,
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`Ltd., 418 F.3d 1282, 1305 (Fed. Cir. 2005) (Ex. 2003) (quoting Catalina Mktg.
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`Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (Ex.
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`2004)). For example, preambles may be found limiting if the specification
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`underscores structure or steps recited in the preamble as important. Catalina
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`Mktg., 289 F.3d at 808. Whether a preamble is treated as a limitation is determined
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`by the facts of each case and upon an understanding of what the inventors actually
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`invented and intended to encompass by the claims. Catalina Mktg., 289 F.3d at
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`808.
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`
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`The preambles in claims 8, 9, 14, and 18 are limiting, because they give life
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`to the meaning of the claims. These preambles define the structure of the
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`apparatus recited in the body of the claims as relating to an apparatus for recording
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`and reporting data from golf or sports events. For example, each of claims 8, 9, 14,
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`4
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`SKYHAWKE Ex. 1031, page 7
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`and 18 recites “information screens,” and each claim’s preamble defines that this
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`structure is limited to “golf information.”
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`These preambles are also limiting because the ʼ566 patent defines,
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`throughout, that the “invention” is directed to the sports like the game of golf. See
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`Novatek, Inc. v. Sollami Co., No. 2013-1389, 2014 U.S. App. LEXIS 5512, at *10
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`(Fed. Cir. Mar. 26, 2014) (preamble may be limiting when the “specifications
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`identify the recited structural elements in the patents’ preambles as “the
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`invention”) (Ex. 2005). For example, the ʼ566 patent establishes that the invention
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`is related to golf or sports where it is desirable to record and report data relating to
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`the event in order to increase a player’s proficiency:
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` The inventive handheld reporting unit and method of
`operation is of course not limited to the game of golf, as
`those skilled in the art will be able to adapt the invention
`to almost any sport or game for which it is desirable to
`record and report a large amount of data. Golf is the
`game for which the invention is best suited, but not the
`only game to which it can be applied.
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`ʼ566 patent at 16:47-53 (emphasis added); see also ʼ566 patent at 1:8-10 (“Field of
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`the Invention: The present invention is related to an apparatus and method for
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`reporting and recording golf information”); id. at 2:19-22 (“Summary of the
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`Invention: “The present invention is a greatly improved handheld computer unit for
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`recording and reporting sports information, for example golf information”).
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`5
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`SKYHAWKE Ex. 1031, page 8
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`These preambles are also limiting because the patent applicant stressed
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`during prosecution that the patent is directed to golf and sports. Compare Catalina
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`Mktg., 289 F.3d at 808-09 (“clear reliance on the preamble during prosecution to
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`distinguish the claimed invention from prior art transforms the preamble into a
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`claim limitation because such reliance indicates use of the preamble to define, in
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`part, the claimed invention”). For example, during prosecution the applicant
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`stated:
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`While applicant has amended claims 1, 15 and 19 to
`clarify the claimed key means, applicant notes that these
`claims are distinguishable on the basis of the keys’
`function in the context of the claimed environment (i.e., a
`golf information reporting apparatus). For example, as
`noted above, each of claims 1, 15 and 19 requires the key
`entry means to operate in complementary fashion with a
`golf
`information
`screens with
`number
`of
`screen/dependent data input fields; the Examiner has yet
`to find an example of a golf information recording
`apparatus with screen/dependent data input fields, which
`allows the use of the simplified key entry means in
`conjunction with multiple different information screens.
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`ʼ566 patent prosecution history, May 27, 1997 Office Action Response at 17-18
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`(underlining in original, bolded emphasis added), Ex. 2006; see also id. at 18 (“a
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`kwerty keyboard bears no relevance to - applicant’s golf information reporting
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`invention”) (emphasis in original).
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`6
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`SKYHAWKE Ex. 1031, page 9
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`
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`B.
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`Petitioner misconstrues “providing a pre-game mode of data
`entry … and providing a choice of at least one of a plurality of
`game-interactive information screens”
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`Instead of identifying discrete words which might be helpful for this Board
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`to construe to aid in its analysis of the prior art references, the Petition improperly
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`asks this Board to construe the following entire element from Claim 18:
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`providing a pre-game mode of data entry in which one or
`more pre-game information screens are displayed to
`prompt the entry of data which defines parameters of an
`upcoming game, and providing a choice of at least one of
`a plurality of game-interactive information screens in a
`subsequent
`game-interactive mode
`of
`operation
`representing different levels of data recording detail.
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`The Petition’s strategy is improper. Specifically, the Petition’s proposed
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`construction excises requirements from the recited claim language without
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`identifying any unclear term or discrete phrase present in the identified language
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`for which a construction is necessary.
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`For example, the Petition argues that “the broadest reasonable construction
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`of the this [sic] term requires that the user can select, in a pre-game mode, the
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`amount of detail to later record in a game-interactive mode.” Petition at 16.
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`However, this truncated summary excises—without explanation—the claim
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`requirements, under the broadest reasonable interpretation standard, of the
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`following:
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`7
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`SKYHAWKE Ex. 1031, page 10
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`
` “a pre-game mode of data entry”;
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` “providing a pre-game mode … in which one or more pre-game
`information screens are displayed”; and
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` The “pre-game information screens are displayed to prompt the entry
`of data which defines parameters of an upcoming game.”
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`Nor has the Petition identified any basis for merging the claim requirements
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`of “providing a pre-game mode…” and “providing a choice of at least one of a
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`plurality of game-interactive information screens in a subsequent game-interactive
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`mode of operation….” Indeed, the Petition’s subheading for this term identifies
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`both of these clauses as separated by an ellipsis, and as such tacitly admits that the
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`two clauses are separate requirements under the broadest reasonable interpretation
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`standard. See Petition at 16, subheading A (“providing a pre-game mode of data
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`entry … and providing a choice of at least one of a plurality of game-interactive
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`information screens …”) (emphasis added).
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`
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`Further, the Petition broadly cites to the ʼ566 patent at 7:45-67 and to the
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`Patent Owner’s infringement contentions in the ongoing litigation—without
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`providing any analysis as to how these citations support the “proposed
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`construction.” Petition at 16. In fact, these citations do not support the proposed
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`construction. The infringement contentions identify many elements in the products
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`accused in the litigation that were excised from the Petition’s “proposed
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`construction.” See, e.g., Petition, Exhibit 1013 at 19-25 (identifying numerous
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`
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`8
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`SKYHAWKE Ex. 1031, page 11
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`“pre-game” information screens); id at 25-26 (identifying “game-interactive
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`screens representing different levels of data recording detail”). Further, the cherry-
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`picked citation to the ʼ566 patent relates to only one embodiment (Figure 2).
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`Regardless, this citation discloses many embodiment requirements that are not
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`encompassed by the Petition’s proposed construction. See, e.g., Petition, Exhibit
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`1001 at 7:45-67 (referring to the embodiment disclosed in Figure 2 as allowing
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`“additional pre-game screens, and disclosing several pre-game parameters”).
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`The Petition also ignores other areas of the ʼ566 patent that more closely
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`align to the identified claim language. See, e.g., Petition, Exhibit 1001 at 8:9-10
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`(“These three game-interactive modes represent three levels of detail for golf
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`information recording.”); 4:20-25 (“In a particular embodiment of the invention the
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`game-interactive reporting modes include a simple one screen ’scorecard‘ mode,
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`an ‘easy track’ mode providing additional detail, and a ’detail track‘ mode in
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`which the screen(s) is set up for recording a most-detailed set of data.”).
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`
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`Because the Petition has improperly attempted to use claim construction as
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`means to truncate a lengthy claim limitation and has provided no rationale as to
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`why the phrase needs construction, the Patent Owner respectfully asserts that the
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`identified claim language is clear on its face and needs no additional construction.
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`9
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`SKYHAWKE Ex. 1031, page 12
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`However, should the Board be inclined to construe this claim language, the
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`Patent Owner proposes the following under the broadest reasonable interpretation
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`standard:
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`Claim language
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`Proposed construction
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`Exemplary support
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`“pre-game mode of data
`entry in which one or
`more pre-game
`information screens are
`displayed to prompt the
`entry of data which
`defines parameters of an
`upcoming game”
`
`
`
`“A data entry mode where
`one or more screens are
`displayed to request
`selection or definition of
`pre-game parameters for
`an upcoming game of
`golf.”
`
`“providing a choice of at
`least one of a plurality of
`game-interactive
`information screens in a
`subsequent game-
`interactive mode of
`operation representing
`
`
`“providing a choice of
`one or more game-
`interactive golf
`information screens
`depicting different levels
`of data recording detail”
`
`10
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`4:10-15: (“When the unit
`is turned on and the game
`recording module
`selected, one or more pre-
`game screens sequentially
`appear in logical order to
`request selection or
`definition of pre-game
`parameters such as the
`names of the players
`information on the golf
`course to be played, the
`clubs being used, and the
`level of detail to be
`recorded by the golfer.”);
`
`
`
`Claim 18: (“A method for
`recording and reporting
`golf information”)
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`4:20-25 (“In a particular
`embodiment of the
`invention the game-
`interactive reporting
`modes include a simple
`one screen “scorecard”
`mode, an “easy track”
`
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`SKYHAWKE Ex. 1031, page 13
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`
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`different levels of data
`recording detail”
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`mode providing additional
`detail, and a “detail track”
`mode in which the
`screen(s) is set up for
`recording a most-detailed
`set of data.”);
`
`
`
`8:9-10 (“These three
`game-interactive modes
`represent three levels of
`detail for golf information
`recording.”);
`
`
`
`Claim 18: (“A method for
`recording and reporting
`golf information”)
`
`
`IV. THE BOARD SHOULD NOT INSTITUTE PETITIONER’S
`REDUNDANT CHALLENGES
`
`The Board is “charged with securing the just, speedy, and inexpensive
`
`resolution of every proceeding and has the discretion to deny some grounds to
`
`ensure that objective is met.” Sony Corp v. Yissum Research Development Co. of
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`the Hebrew Univ. of Jerusalem, IPR2013-00219 (Paper 33, Nov. 21, 2013), Ex.
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`2007 at 3 (citing 37 C.F.R. §§ 42.1(b), 42.108(b)). To that end, the Board has the
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`power to institute IPR “based on grounds covering all of the challenged claims,
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`going forward on the grounds that the Board determine[s] to be the most sufficient
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`
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`11
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`SKYHAWKE Ex. 1031, page 14
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`substantively.” Id. If the Board decides to institute IPR on any of the claims in the
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`’566 patent, this Petition presents just such an opportunity for streamlining of the
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`review process.
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`A. The Board’s Precedent Requires Petitioner to Distinguish
`Between Otherwise Redundant Prior Art References
`
`The Board has recognized redundancy—both horizontal and vertical—as a
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`basis for not considering every challenge raised by a petitioner:
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`[M]ultiple grounds, which are presented in a redundant
`manner by a Petitioner who makes no meaningful
`distinction between them, are contrary to the regulatory
`and statutory mandates, and therefore are not entitled to
`consideration.
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Co., CBM2012-00003 (Paper 7,
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`Oct. 25, 2012), Ex. 2008 at *2. When assessing non-redundancy, the “focus is on
`
`whether Petitioner articulated a meaningful distinction in terms of the relative
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`strengths and weaknesses with respect to application of the reference disclosures to
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`one or more claim limitations.” Oracle Corp. v. Patent of Clouding IP, LLC,
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`IPR2013-00075 (Paper 15, June 13, 2013), Ex. 2009 at *1.
`
`In Liberty Mutual, the Board recognized that a Petitioner may not assert a
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`“plurality of prior art references applied not in combination to complement each
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`other but as distinct and separate alternatives [where a Petitioner] do[es] not
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`explain why one reference more closely satisfies the claim limitation at issue in
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`
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`12
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`SKYHAWKE Ex. 1031, page 15
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`some respects than another reference, and vice versa.” Liberty Mutual Ins. Co. at
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`*3 (emphasis added). As the Board explained, “[t]he underlying principle is this:
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`If either the base ground or the ground with additional reference is better from
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`all perspectives, Petitioner should assert the stronger ground and not burden the
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`Patent Owner and the Board with the other.” Liberty Mutual Ins. Co. at *7
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`(emphasis added).
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`B.
`
`Petitioner’s Statement of Non-Redundancy Establishes that the
`Ultra Golf Reference is the Stronger Ground
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`As noted above, to be effective, a statement of non-redundancy must
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`establish “why one reference more closely satisfies the claim limitation at issue in
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`some respects than another reference, and vice versa.” Liberty Mutual Ins. Co. at
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`*3. However, Petitioner’s “Statement of Non-redundancy” actually establishes (1)
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`that the Ultra Golf-based and Palmer-based challenges are redundant; and (2) that
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`the Ultra Golf-based challenge lacks a key weakness of the Palmer-based
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`challenge. Specifically, Petitioner explains that the Ultra Golf grounds are
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`required because “Patent Owner may attempt to distinguish elements of the
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`challenged claims based upon purportedly unique screen sequences (such as the
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`‘pre-game’ screens of the ’566 patent), which are clearly described by Ultra Golf
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`and PGA Tour Golf.” Id. As Petitioner’s stated basis for needing the Ultra Golf
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`grounds is that this ground “clearly” shows the claimed “screen sequences,” it
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`13
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`SKYHAWKE Ex. 1031, page 16
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`follows that the Petitioner believes that Ultra Golf more strongly shows the
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`claimed “screen sequences” than the redundant Palmer-based grounds.
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`While touting the purported strengths of the Ultra Golf-based challenge,
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`Petitioner neither identifies nor explains any corresponding strength of the Palmer-
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`based challenge. In fact, the entire statement of non-redundancy is focused on the
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`various purported strengths of the Ultra Golf reference, including an assertion that
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`“the gaming industry is particularly relevant to the claimed subject matter.”5
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`Given that Petitioner has not identified any required “perspective” from which the
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`Palmer-based challenges are stronger, and given Petitioner’s assertion that the
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`Ultra Golf challenges cover all of the claims in the Petition, the Palmer-based
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`challenges should not be instituted because they are needlessly redundant.
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`C.
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`Petitioner is Correct that the Palmer-Based Challenges Do Not
`Disclose the Claimed Information Screens
`
`As Petitioner essentially concedes in its statement of non-redundancy, the
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`challenges based on the combination of Palmer and Osamu and/or Van Heuvel fail
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`5 Id. In the Statement of Non-Redundancy, Petitioner also fails to mention the
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`Game Boy component of the Ultra Golf ground—perhaps because to do so would
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`remind the Board that Game Boy is also a handheld device, thus further obviating
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`the Palmer reference.
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`14
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`SKYHAWKE Ex. 1031, page 17
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`with respect to the limitation “storing a plurality of pre-game, game interactive and
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`post-game information screens” of claims 8-11, 14, and 18. In particular, looking
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`at pages 22 and 23 of the Petition, the charting of limitation (a) of claim 8, which
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`includes this limitation, Petitioner provides clear statements in its claim chart
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`explicitly identifying the claimed “game-interactive” screens and the claimed
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`“post-game” screens (bottom two-thirds of page 23), yet never explicitly mentions
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`the claimed “pre-game” screens.
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`Even assuming that the unlabeled portions are intended to apply to the
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`claimed “pre-game” screens, the assertions utterly fail because none of cited
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`sections mention any pre-game activities—much less screens. Specifically, the
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`citation to page 10 of Exhibit 1005 fails because the described club selection
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`process in Palmer takes place during a golf game, and is, thus, not “pre-game.”
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`Exhibit 1005 at 10. Nor is an undisclosed mechanism to edit the “user database”
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`after a game to reflect the actual distances shot an example of a pre-game
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`information screen. Exhibit 1005 at 15. And the citation to Palmer’s ability to
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`record a score (page 17 of Palmer) similarly fails, because a capability to record a
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`game score, by definition, occurs during or after a game. Lastly, the reference to
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`Palmer’s ability to record data as “the user progresses around the golf course”
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`similarly—by definition—cannot disclose the claimed “pre-game” screens.
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`15
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`SKYHAWKE Ex. 1031, page 18
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`Likewise, the assertions under the “Osamu” heading in the claim charts fail
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`to disclose the claimed “pre-game” screens. As the very section cited by the
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`Petitioner explains, the cited activity takes place as the “golfer who comes to a tee
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`shot” when the golfer “start[s] the inputs by pushing the key of tee-start-hole in.”
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`Exhibit 1006 at 18. In other words, the cited sections explicitly state the cited
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`inputs—for which no screen is even used—take place during a game. Id. As
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`none of the references cited by the Petitioner for limitation 8a disclose the claimed
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`“pre-game” screens, the challenge would fail even if it were not wholly redundant.
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`D. The Challenges to Claim 18 are Doubly Redundant
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`Petitioner’s combination of Palmer, Vanden Heuvel, Osamu, and Turbo Tax
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`to challenge Claim 18 of the ’566 patent is not only horizontally redundant with
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`respect to Ultra Golf, it is also vertically redundant, as Petitioner has already
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`challenged that element using Palmer, Vanden Heuvel, and Osamu. Petitioner
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`provides no expressly identified discussion of non-redundancy for the four-
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`reference challenge of Claim 18 of the ’566 patent, instead stating only:
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`[S]hould Patent Owner argue that the broadest reasonable
`construction of this term requires a pre-defined choice
`between discrete modes, as shown in the illustrative
`embodiment at col. 8, ll. 1-10 of the ’566 patent, not only
`would this have been an obvious implementation design
`choice [], but an example of such a pre-mode selection
`screen was utilized in the popular Turbo Tax software.”
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`Petition at p. 38.
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`16
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`SKYHAWKE Ex. 1031, page 19
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`This does not satisfy Liberty Mutual’s requirement of a bi-directional
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`explanation, as again Petitioner admits no weakness in its four-reference
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`combination. Accordingly, if the Board chooses to institute a trial on Claim 18
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`with Palmer as a base reference, it should institute the challenge based on Palmer,
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`Osamu, Vanden Heuvel, and Turbo Tax, as Petitioner’s arguments make it appear
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`that Petitioner believes that this four-reference combination is the most efficient
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`combination (after the Ultra Golf combination) to employ for Claim 18.
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`V. CONCLUSION
`The Petitioner has the burden to show that institution is warranted in these
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`cases at all. 35 U.S.C. § 314. Therefore, the Board should deny this Petition for
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`IPR of the ’566 patent with regard to claims 8-11, 14, and 18. If the Board
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`institutes at all, it should be only on the Ultra Golf-based grounds and not the
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`redundant Palmer-based grounds, which Petitioner admits are weaker.
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`SKYHAWKE Ex. 1031, page 20
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`Dated: May 27, 2014
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`Respectfully submitted,
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`By: /David M. Hoffman/
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` David M. Hoffman
`Reg. No. 54,174
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`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: (512) 226-8154
`F: (512) 320-8935
`Email: IPR30912-0003IP1@fr.com
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`
`Counsel for Patent Owner
`L&H Concepts, LLC
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`18
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`SKYHAWKE Ex. 1031, page 21
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`Case IPR2014-00437
`Attorney Docket No: 30912-0003IP1
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on May 27, 2014, a complete and entire copy of this Patent Owner L&H
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`Concept LLC’s Preliminary Response was provided via email to the Petitioner by
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`serving the correspondence email address of record as follows:
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`Thomas J. Fisher
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
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`E-mail: CPDocketFisher@oblon.com
` CPDocketMcKeown@oblon.com
` CPDocketRicciuti@oblon.com
` CPDocketEnglehart@oblon.com
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`/Jessica K. Detko/
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`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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`19
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`SKYHAWKE Ex. 1031, page 22
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