IPR2015-00114
`Preliminary Response
`U.S. Patent No. 8,023,580
`
`By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SAMSUNG ELECTRONICS CO. LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC; and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`
`Petitioner
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
`
`___________________
`
`Case No. IPR2015-00114
`
`Patent 8,023,580
`
`___________________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`
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`IPR2015-00114
`Preliminary Response
`U.S. Patent No. 8,023,580
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`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`TABLE OF EXHIBITS ........................................................................................... vi
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`INSTITUTION OF REVIEW SHOULD BE DENIED UNDER 35
`U.S.C. §325(d) ................................................................................................ 3
`
`A.
`
`B.
`
`Procedural Background. ....................................................................... 3
`
`Argument .............................................................................................. 4
`
`1.
`
`2.
`
`35 U.S.C. §325(d) And Congressional Intent Compel
`Denial of Petition Because It Is Based On The Same
`Prior Art And Substantially The Same Argument As That
`Previously Presented To The Board In The ‘518 IPR. .............. 4
`
`The ‘114 Petition Is A Response To The Board’s
`Decision Denying Institution of Challenged Claims in the
`‘518 IPR And Should Be Denied On Procedural and
`Policy Grounds. ........................................................................ 14
`
`III. OVERVIEW OF THE ‘580 PATENT ......................................................... 15
`
`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART ...... 17
`
`A. A Person Having Ordinary Skill In The Art ...................................... 17
`
`B.
`
`Claim Construction............................................................................. 18
`
`1.
`
`2.
`
`3.
`
`“First Modulation Method” and “Second Modulation
`Method” ................................................................................... 19
`
`“At Least Two Types of Modulation Methods” ...................... 22
`
`“Master” and “Slave” ............................................................... 25
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`IPR2015-00114
`Preliminary Response
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`Page
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`V.
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`THERE IS NO REASONABLE LIKELIHOOD THAT ANY OF
`THE CLAIMS 2, 19, 49, 52, 53, AND 59 ARE RENDERED
`OBVIOUS BY THE COMBINATION OF ALLEGED APA AND
`U.S. PATENT NO. 5,706,428 (“BOER”) .................................................... 27
`
`A. Alleged Admitted Prior Art (“APA”) ................................................ 28
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`Summary Of Boer (Ex. 1204) ............................................................ 28
`
`Petition Fails To Demonstrate Any Motivation To Combine
`Boer With APA. ................................................................................. 32
`
`Petition Does Not Demonstrate A Reasonable Likelihood That
`The Combination Of Boer And APA Renders Claim 2 Obvious. ..... 38
`
`Petition Does Not Demonstrate That The Combination Of Boer
`And APA Renders Claim 19 Obvious. .............................................. 43
`
`Petition Does Not Demonstrate That Combination of Boer And
`APA Renders Independent Claim 49 and Its Dependent Claims
`52 And 53 Obvious............................................................................. 46
`
`Petition Does Not Demonstrate That The Combination Of Boer
`And APA Renders Claim 52 Obvious For An Additional
`Reason. ............................................................................................... 48
`
`The Petition Does Not Demonstrate A Reasonable Likelihood
`That Combination Of Alleged APA And Boer Renders Claim
`59 Obvious ......................................................................................... 49
`
`VI. CONCLUSION ............................................................................................. 50
`
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`IPR2015-00114
`Preliminary Response
`U.S. Patent No. 8,023,580
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`TABLE OF AUTHORITIES
`
`
`CASES
`3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365
`(Fed. Cir. 2003) ................................................................................................... 21
`
`Page(s)
`
`Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324 (Fed. Cir. 2003) .......................... 24
`
`In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007) ........................................................ 17
`
`Butamax Advanced Biofuels v. Gevo, Inc., IPR2014-00581, Paper 8
`(PTAB Oct. 14, 2014) ........................................................................................... 5
`
`CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333 (Fed. Cir. 2003) ................... 27
`
`Conopco, Inc. dba Unilever v. Proctor & Gamble, IPR2014-00628, Paper 21
`(PTAB Oct. 20, 2014) ........................................................................................... 5
`
`Customplay, LLC v. Clearplay, Inc., PR2014-00783, Paper 9
`(PTAB November 7, 2014) ................................................................................... 6
`
`In re Cortright, 165 F.3d 1353 (Fed. Cir. 1999) ...................................................... 17
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745
`(Fed. Cir. May 9, 2014) ...................................................................................... 38
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342
`(Fed. Cir. 2012) ................................................................................................... 37
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .......................................... 37, 38
`
`Microsoft Corp. v. Enfish, LLC, IPR2014-00576, Paper 12
`(PTAB Sept. 29, 2014) ......................................................................................... 5
`
`In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) ..................................................... 37
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 22
`
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) ..................................... 17
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`IPR2015-00114
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`Page(s)
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`Unilever, Inc. v. Proctor & Gamble, IPR2014-00506, Paper 17
`(PTAB July 7, 2014) ............................................................................................. 5
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ................... 24
`
`Voris v. Eikel, 346 U.S. 328 (1953) ......................................................................... 12
`
`In re Weiler, 790 F.2d 1576 (Fed. Cir. 1986) .......................................................... 12
`
`Wowza Media Systems, LLC et al. v. Adobe Systems Inc., IPR2013-00054,
`Paper 12 (PTAB April 8, 2013) .......................................................................... 37
`
`Zimmer Holdings et al. v. Bonutti Skeletal Innov., IPR2014-01080, Paper 17
`(PTAB Oct. 31, 2014) ........................................................................................... 5
`
`STATUTES
`35 U.S.C. § 103 .......................................................................................................... 5
`
`35 U.S.C. § 103(a) .................................................................................................... 7
`
`35 U.S.C. § 251 ........................................................................................................ 12
`
`35 U.S.C. §315(c) ...................................................................................................... 2
`
`35 U.S.C. §325(d) ............................................................................... 2, 3, 4, 5, 6, 11
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 41 .......................................................................................................... 14
`
`37 C.F.R. § 42.71 ..................................................................................................... 14
`
`37 C.F.R. § 42.100(b) .............................................................................................. 17
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) ......................................................... 17
`
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) ...................................................... 11
`
`Manual of Patent Examining Procedure (MPEP) § 2111 ........................................ 17
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`Page(s)
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`Manual of Patent Examining Procedure (MPEP) § 2141(II)(C) ............................. 18
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`IPR2015-00114
`Preliminary Response
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`Exhibit
`No.
`
`TABLE OF EXHIBITS
`
`Exhibit Description
`
`Amended Petition for Inter Partes Review of U.S. Patent
`No. 8,023,580, IPR2014-00518, Paper 4 (PTAB, April 3, 2014).
`
`IPR2014-00518, Paper No. 16, Decision, Institution of Inter Partes
`Review.
`
`Excerpts from the Comprehensive Dictionary of Electrical
`Engineering, 397 (CRC Press LLC 1999) (previously submitted as
`Ex. 2206 in IPR2014-00518).
`Excerpts from the Modern Dictionary, 5th ed., Revised and Updated
`932 (Butterworth-Hinemann 1997) (previously submitted as Ex.
`2205 in IPR2014-00518).
`
`Amended Petition for Inter Partes Review of U.S. Patent No.
`8,023,580, IPR 2014-00515, Paper 4 (PTAB, April 3, 2014).
`
`2001
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`2002
`
`2003
`
`2004
`
`2005
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`IPR2015-00114
`Preliminary Response
`U.S. Patent No. 8,023,580
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`Patent Owner Rembrandt Wireless Technologies, LP (“Rembrandt”) hereby
`
`submits this Preliminary Response to the Petition for Inter Partes review (referred
`
`to herein as “the ‘114 IPR,” “Petition” or “Paper 1”) filed by Samsung Electronics
`
`Co. Ltd., Samsung Electronics America, Inc., Samsung Telecommunications
`
`America, LLC, and Samsung Austin Semiconductor, LLC (collectively,
`
`“Petitioner”) on October 21, 2014, which challenges claims 2, 19, 49, 52, 53, and
`
`59 (“the Challenged Claims”) of U.S. Patent No. 8,023,580 (“the ‘580 Patent”).
`
`This filing is timely as it is being filed pursuant to the Board’s October 30, 2014,
`
`Order (Paper 5) setting a preliminary response date of December 1, 2014.
`
`I.
`
`INTRODUCTION
`The Board, in IPR2014-00518 (“the ‘518 IPR”), previously has denied inter
`
`partes review of the same Challenged Claims of the ‘580 patent, on the same
`
`grounds, in which the same Petitioner is a party. Unsatisfied with the Board’s
`
`decision, Petitioner filed this “follow-on” Petition, presenting the same grounds
`
`and essentially the same arguments to the Board but hoping for a different result.
`
`Since this Petition was filed more than a year from March 20, 2013 service of the
`
`original Complaint for patent infringement, the Petition was accompanied by a
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`IPR2015-00114
`Preliminary Response
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`motion for joinder (Paper 3) with the ‘518 IPR. Patent Owner filed its opposition
`
`to the motion for joinder (Paper 8, “Opposition”) on November 8, 2014. 1
`
`This ‘114 IPR does not rely on any new ground of invalidity but merely
`
`attempts to re-argue the same prior art and on substantially the same basis that the
`
`Board considered and rejected in the ‘518 IPR Decision. For that reason, and
`
`consistent with Congressional intent, the Board should exercise its discretion to
`
`deny institution under 35 U.S.C. §325(d).
`
`Moreover, since Petitioner admits that the ‘114 Petition is a response to the
`
`Board’s Decision in the ‘518 IPR (see Petition at 3), it should also be denied on
`
`procedural and policy grounds. The rules governing inter partes review do not
`
`provide for petitioners to respond to the Board’s decision. The only recourse is to
`
`file a request for rehearing, which Petitioner failed to do. Permitting institution,
`
`
`1 Patent Owner argued in its Opposition that the motion for joinder should be
`
`denied because (1) 35 U.S.C. §315(c) does not permit a party to “join” a
`
`proceeding in which it is already a party; (2) the Board has previously denied
`
`joinder and petitions similar to the ‘114 IPR petition as a belated and improper
`
`attempt to remedy the deficiencies of the first petition; and (3) joinder would
`
`negatively impact the ‘518 IPR schedule and unduly prejudice the Patent Owner.
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`Preliminary Response
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`would not only be contrary to the rules of the proceeding, but also encourage
`
`gamesmanship and increased burden on the Board and patent owners.
`
`Even if it is found that the Petitioner is not precluded from challenging the
`
`claims on the same grounds as in the ‘518 IPR, Petition fails to show a reasonable
`
`likelihood of prevailing on any Challenged Claim of the ‘580 Patent. Accordingly,
`
`Patent Owner respectfully requests that the Board deny inter partes review as to all
`
`grounds set forth in the Petition.
`
`II.
`
`INSTITUTION OF REVIEW SHOULD BE DENIED UNDER 35
`U.S.C. §325(d)
`A.
`Petitioner was served with a Complaint alleging infringement of the ‘580
`
`Procedural Background.
`
`patent on March 20, 2013. One year later, on March 20, 2014, Petitioner filed four
`
`requests for inter partes review (IPR2014-00514, IPR2014-00515, IPR2014-
`
`00518, and IPR2014-00519), challenging the ‘580 patent on multiple grounds. On
`
`September 9, 2014, the Board denied the requests in IPR2014-00514 and IPR2014-
`
`00515. On September 23, 2014, the Board issued decisions in IPR2014-00518 and
`
`IPR2014-00519 instituting trials with respect to a subset of the claims, but
`
`declining institution with respect to claims 2, 19, 49, 52, 53, and 59 (IPR2014-
`
`00518) and claims 23, 25, 29, 30 and 41 (IPR2014-00519).
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`IPR2015-00114
`Preliminary Response
`U.S. Patent No. 8,023,580
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`On October 21, 2014, Petitioner filed new IPRs (IPR2015-00114 and
`
`IPR2015-00118) directed to the claims for which trial was not instituted. These
`
`“new” petitions again challenge the claims for which the Board denied institution
`
`and are based on the same prior art that was rejected by the Board in the ‘518 IPR
`
`and IPR2014-00519. However, with the benefit of the Board’s decisions declining
`
`institution, Petitioner prepared new expert declarations containing over 40
`
`paragraphs of “additional opinions regarding the applicability of the prior art
`
`references [the expert] discussed in [his] previous declaration to certain claims for
`
`which the… Board declined to institute a trial.” ‘114 IPR, Ex. 1221 at ¶2; ‘118
`
`IPR, Ex. 1319 at ¶2.
`
`B. Argument
`35 U.S.C. §325(d) And Congressional Intent Compel Denial
`1.
`of Petition Because It Is Based On The Same Prior Art And
`Substantially The Same Argument As That Previously
`Presented To The Board In The ‘518 IPR.
`
`35 U.S.C. §325(d) authorizes the Board to reject petitions or grounds for
`
`inter partes review that seek to reargue positions previously rejected:
`
`(d) MULTIPLE PROCEEDINGS.—… In determining whether
`to institute or order a proceeding under this chapter, chapter 30,
`or chapter 31, the Director may take into account whether,
`and reject the petition or request because, the same or
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`IPR2015-00114
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`substantially the same prior art or arguments previously were
`presented to the Office.2
`
`As was discussed in the Opposition to Petitioner’s motion for joinder, there
`
`is ample precedent of the Board exercising its discretion under §325(d) to deny
`
`subsequent petitions that are based on previously-rejected grounds. See Paper 8 at
`
`9, citing Unilever, Inc. v. Proctor & Gamble, IPR2014-00506, Paper 17 at 7
`
`(PTAB July 7, 2014); Conopco, Inc. dba Unilever v. Proctor & Gamble, IPR2014-
`
`00628, Paper 21 (PTAB Oct. 20, 2014); Butamax Advanced Biofuels v. Gevo, Inc.,
`
`IPR2014-00581, Paper 8 at 12 (PTAB Oct. 14, 2014); Zimmer Holdings et al. v.
`
`Bonutti Skeletal Innov., IPR2014-01080, Paper 17 at 5 (PTAB Oct. 31, 2014);
`
`Microsoft Corp. v. Enfish, LLC, IPR2014-00576, Paper 12 at 6 (PTAB Sept. 29,
`
`2014); see also Paper 8 at 5-8.
`
`Petitioner admits in its Petition that it challenges the same claims on the
`
`same prior art grounds that were previously presented by Petitioner in the ‘518
`
`IPR. See Petition at e.g., 3 (“Petitioner requests inter partes review of claims 2,
`
`19, 49, 52, 53, and 59 because they are rendered obvious under 35 U.S.C. § 103 by
`
`Admitted Prior Art (“APA”) in view of Boer (Ex. 1204). These claims were
`
`
`2 Unless otherwise noted, all emphasis formatting throughout the
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`Preliminary Response is added.
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`previously challenged in IPR2014-00518, but the Board chose not to institute trial
`
`on them.”) (emphasis added). Petitioner does not assert that the Petition is based
`
`on any change in facts that occurred since the filing of the ‘518 Petition or any
`
`arguments that Petitioner could not have made when filing the ‘518 Petition.
`
`Indeed, the Petition is explicitly a response to the Board’s Decision in the ‘518 IPR
`
`rejecting the Challenged Claims.
`
`On similar facts, the Board has recently denied institution of review in
`
`Customplay, LLC v. Clearplay, Inc., IPR2014-00783, Paper 9 at 7 (PTAB
`
`November 7, 2014) under 35 U.S.C. § 325(d) “[b]ecause the Petition presents
`
`substantially the same prior art, and substantially the same arguments, as the
`
`petition in the ‘484 IPR… .” The Board stated:
`
`A decision to institute review on some claims in a first inter
`partes review, however, should not act as a how-to guide for
`the same Petitioner filing a second petition for inter partes
`review challenging claims that it unsuccessfully challenged in
`the first petition or claims that it reasonably could have
`challenged in the first petition.
`
`Id. at 9. In denying institution of a subsequent petition, the Board found that
`
`petitioner presented “substantially the same prior art and arguments” as in the prior
`
`petition. Id. at 10, 11, 12-13. Like in Customplay, the ‘114 Petition raises the
`
`same grounds against the same challenged claims, and presents essentially the
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`IPR2015-00114
`Preliminary Response
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`same arguments, with additional explication based on the Board’s prior rejection,
`
`as those the Board fully considered and rejected in the ‘518 IPR. The Board
`
`should not allow Petitioner to reargue its prior position.
`
`As an example, just like in the present ‘114 IPR where Petitioner challenges
`
`claims 2, 19, 49, 52, 53, and 59 as obvious under 35 U.S.C. § 103(a) over APA and
`
`Boer, Petitioner contended in the ‘518 IPR that claims 1, 2, 4, 5, 10, 13, 19–22, 49,
`
`52, 53, 54, 57–59, 61, 62, 66, 70, and 76–79 were obvious under 35 U.S.C.
`
`§ 103(a) over APA and Boer. See Ex. 2001 at 2-3 and compare with Petition at 3.
`
`Claims 2 and 59 depend from claims 1 and 58, respectively, and add limitations
`
`that the third sequence be transmitted in the first modulation method and that the
`
`third sequence indicates the reversion of the communication from the master to the
`
`slave to the first modulation method; similarly, claim 49 requires, among others,
`
`that “the second sequence is transmitted in the first modulation method and
`
`indicates that communication has reverted to the first modulation method.” In the
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`‘518 IPR, Petitioner argued that these limitations were obvious “in view of the
`
`prior art” of Boer and APA. See Ex. 2001 at 24-25 (regarding claim 2), 37-39
`
`(regarding claim 49), and 49 (regarding claim 59). The Board rejected these
`
`arguments, stating that:
`
`Petitioner has not provided sufficient evidence or explanation in
`support of why the fact that Boer’s SIGNAL and SERVICE
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`fields are always transmitted using DBPSK (the “first”
`modulation method) might demonstrate obviousness of the
`subject matter of claim 2. Petitioner has failed to show, in
`particular, how the SIGNAL and SERVICE fields might be
`deemed, as alleged, to “indicate” that communication from the
`master to the slave has reverted to the first modulation method,
`as recited in claim 2.
`
`***
`
`Although it appears that Petitioner attempts to provide more
`explanation in its challenge of dependent claim 59, as compared
`with that of claim 2 or 49, we are not persuaded there is a
`reasonable likelihood that Petitioner would prevail in its
`challenge of any of claims 2, 49, and 59.
`
`Ex. 2002, IPR2014-00518, Institution Decision (Paper 16) at 14-15. Armed with
`
`the Board’s guidance on the deficiencies in the ‘518 IPR, Petitioner renewed its
`
`attempt to invalidate claims 2, 49, and 59 based on the same combination of Boer
`
`and APA. This time, however, Petitioner endeavors to directly respond to the
`
`deficiencies identified by the Board by adding over 40 new paragraphs to its
`
`expert’s declaration. In a similar fashion, Petitioner addressed the deficiencies
`
`pointed out by the Board in the Decision on Institution in the ‘518 IPR with respect
`
`to claims 19 and 52-53 (which depend from claim 49). See Petition at 25, 37, 42.
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`IPR2015-00114
`Preliminary Response
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`The ‘114 IPR Petition contains prior art arguments substantially similar to
`
`those unsuccessfully advanced by Petitioner in the ‘518 IPR. However, with the
`
`benefit of the Board’s decision declining institution on certain claims, Petitioner
`
`has tried to “beef-up” its expert declaration in an attempt to bolster challenges that
`
`were unsuccessfully advanced in the earlier ‘518 IPR Petition.
`
`Below is a comparison of the mapping of Boer advanced against claim 2 in
`
`the earlier ‘518 IPR and the follow-on ‘114 IPR. Compare chart from the ‘518
`
`Petition, Ex. 2001 at 25:
`
`with the chart from the ‘114, Petition, at 18:
`
`
`
`
`
`While the formatting and color coding has changed, the substance has not.
`
`Both petitions purport to map identical aspects of Boer to the “first sequence,”
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`“second sequence,” and “third sequence” from claim 2. And both petitions purport
`
`to map the data field in a first version of Boer’s figure 4 to one modulation method,
`
`and the data field in a second version of Boer’s figure 4 to a different modulation
`
`method. Compare ‘518 Petition, Ex. 2001 at 25 (“As discussed, Header 218,
`
`which includes SIGNAL 206 and SERVICE 208 fields, always transmitted using
`
`DPBSK (the “first modulation method).” with ‘114 Pet. at. 24 (“By placing the
`
`first predetermined value in SIGNAL field 206 and the first predetermined value in
`
`SERVICE filed 208, these two fields indicate that transmission of the DATA field
`
`214 “has reverted to the first modulation method,” as required by claims 2, 49, 52-
`
`53 and 59.”).
`
`The same is true for the other claims being challenged. For example, with
`
`respect to claim 19, the mappings advanced in the two petitions are again virtually
`
`identical. Compare ‘518 Pet. at 25 (“Boer discloses that a station 18 (first type)
`
`can receive DBPSK (“first modulation method) transmissions”) with ‘114 Pet. at.
`
`24 (“Thus, the transceiver (i.e. access point 12) “is configured to receive data from
`
`the intended destination (i.e. a station 18) in the first modulation method (i.e.
`
`DBPSK) when the intended destination (i.e. a station 18) is the first type of
`
`receiver.”).
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`IPR2015-00114
`Preliminary Response
`U.S. Patent No. 8,023,580
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`In the claim charts included both with the second Goodman Declaration (Ex.
`
`1221) and the ‘114 IPR Petition, Petitioner cited to additional passages from Boer
`
`to support the same arguments previously made in the ‘518 IPR Petition. Compare
`
`element [2b] in the ‘114 IPR Petition and second Goodman Declaration (Paper 1 at
`
`31-32 and Ex. 1221 at 20, respectively) with element [2b] in the ‘518 IPR Petition
`
`(‘518 IPR, Ex. 2001, at 34). The same is true for claims 19, 49 (limitation [49f]),
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`and 59; the claim charts for claims 52 and 53 remained unchanged.
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`Petitioner makes no attempt to argue that the information presented in the
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`‘114 IPR or the Goodman Declaration was not available to it at the time of filing
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`the ‘518 IPR. There is simply no reason why Petitioner should be afforded a
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`“second bite” here. If the Board accepts Petitioner’s “second bite” of repetitive
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`grounds, it will encourage other petitioners to engage in a pattern of serial IPR
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`filings.
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`Denying the ‘114 IPR Petition is also consistent with the legislative intent
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`behind Section 325(d) –which is to prevent gamesmanship by petitioners filing
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`petitions in a piecemeal manner. See 157 Cong. Rec. S1042 (daily ed. Mar. 1,
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`2011) (Statement of Sen. Kyl) (Sen. Kyl stating that § 325(d) “allows the Patent
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`Office to reject any request for a proceeding, including a request for ex parte
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`reexamination, if the same or substantially the same prior art or arguments
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`Preliminary Response
`U.S. Patent No. 8,023,580
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`previously were presented to the Office with respect to that patent.”). Thus,
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`denying the instant Petition because the same prior art and substantially the same
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`arguments have been previously considered and rejected by the Board is consistent
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`with the Congressional intent.
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`It is anticipated that Petitioner may attempt to argue that the Board should
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`exercise its discretion to institute because the America Invents Act (the “AIA”) “is
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`remedial in nature” and “should be construed liberally,” as it did in its reply to the
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`opposition to its motion for joinder. There, Petitioner stated that:
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`Thus, the AIA “is remedial in nature, based on fundamental
`principles of equity and fairness, and should be construed
`liberally,” In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986),
`“in conformance with it purpose, and in a way which avoids
`harsh and incongruous results,” see Voris v. Eikel, 346 U.S.
`328, 333 (1953).
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`Paper 9, Reply to Opp. To Joinder, at 3-4.
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`Any linking of “the AIA” with In re Weiler and Voris v. Eikel is baseless.
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`First, both In re Weiler and Voris were decided decades before the AIA and have
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`nothing to do with the AIA. In re Weiler relates to the reissue statute (35 U.S.C.
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`§ 251), and Voris v. Eikel relates to the Longshoreman’s and Harbor Workers’
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`Compensation Act. Petitioner has provided no authority – and Patent Owner is not
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`aware of any – that the AIA “is remedial in nature” and “should be construed
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`liberally.” Thus, any notion that the Board should exercise discretion to allow
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`Petition because the “AIA is remedial in nature” has no basis in the law and should
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`be rejected.
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`Moreover, the very reasons Petitioner relies on to claim that the Board
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`should apply the holdings of those decisions to the AIA and this Petition, viz.,
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`Congress wanted to provide “a more efficient system for challenging patents” and
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`to “reduc[e] litigation costs” do not apply here, because this Petitioner is not
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`seeking efficiency and to reduce litigation costs. Petitioner could have filed its
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`IPRs early in the district court litigation process, and moved to stay the district
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`court litigation. It chose not to do so. Rather, Petitioner allowed the district court
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`litigation to advance and waited until the last possible day to file its IPRs -- making
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`a stay of the litigation unlikely and ensuring that the IPRs would not reach the
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`stage of a final written decision until after the district court case is tried in
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`February, 2015. This timing eliminated any risk that Petitioner would be estopped
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`(by a final written decision) from contesting validity at trial, and secured for
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`Petitioner another venue in which it could seek to invalidate the patent in the event
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`it loses at trial. Contrary to the intent of Congress, Petitioner has timed these IPRs
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`in a manner that actually decreases efficiency and increases litigation costs.
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`2.
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`The ‘114 Petition Is A Response To The Board’s Decision
`Denying Institution of Challenged Claims in the ‘518 IPR
`And Should Be Denied On Procedural and Policy Grounds.
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`The ‘114 Petition responds directly to the specific flaws pointed out by the
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`Board in the Decision denying institution of Challenged Claims in the ‘518 IPR.
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`See Petition at 3, 14 (“In the prior ‘518 Institution Decision, the Board found that
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`Petitioner had not met its burden regarding claims 2, 49, and 59 because Petitioner
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`did not show that…;” “Regarding claim 2, the Board stated that ‘Petitioner had
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`failed to show, in particular, how the SIGNAL and SERVICE fields might be
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`deemed, as alleged, to ‘indicate’ that communication from the master to the slave
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`has reverted to the first modulation method, as recited in claim 2.”); 22 (addressing
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`the flaws pointed out by the Board regarding claim 19); 34-36 (“This is the
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`limitation for which the Board asserted Petitioner did not meet its burden.”); 38
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`(addressing the flaws pointed by the Board regarding dependent claims 52 and 53).
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`The rules governing inter partes review do not provide for petitioners to
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`respond to the Board’s decision on institution outside of a request for rehearing.
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`See 37 C.F.R. §§ 41 and42.71. Petitioner did not file a request for rehearing.
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`Procedurally, a pleading responsive to the Board’s institution decision in the form
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`of another petition is simply not permitted by the rules.3
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`As for policy grounds, as the Board already has recognized (see supra, pp.
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`5-6) permitting institution would encourage gamesmanship whereby Petitioners
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`would be incentivized to file serial petitions and increase the burden on both the
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`Board and patent owners in having to respond to renewed petitions from unhappy
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`petitioners seeking a reconsideration of the Board’s denial of institution decisions.
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`Clearly, this is not the intent of the America Invents Act.
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`III. OVERVIEW OF THE ‘580 PATENT
`The ‘580 patent to inventor Gordon Bremer claims priority to a provisional
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`application filed on December 5, 1997. The ‘580 patent discloses a system in
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`which network devices may communicate with other network devices according to
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`a master/slave relationship using different types of modulation methods. (Ex.
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`1301, Abstract).
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`3 Plus, Petitioner unfairly enjoyed 49 additional pages of briefing to address
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`the flaws in its prior arguments with respect to six claims previously considered
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`and denied by the Board. Petitioner surely does not get that many pages in a
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`request for rehearing.
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`The use of multiple types of modulation methods in a master/slave system as
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`taught by the ‘580 Patent can, for example, permit selection of the modulation type
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`best suited for a particular application. (Id., 1:66-2:33). Annotated Figure 4 shows
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`an embodiment of the patented technology where some devices in the network
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`communicate using one type of modulation method (e.g., amplitude modulation),
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`while other devices communicate using a different type of modulation method
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`(e.g., frequency modulation):
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`(Id., 5:47-56). Such a system provides for greater efficiency, seamless
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`communication with all devices, backward-compatibility, and decreased costs.
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`(Id., 2:50-57; 1:66-2:15).
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`IPR2015-00114
`Preliminary Response
`U.S. Patent No. 8,023,580
`IV. CLAIM CONSTRUCTION AN