IPR2015-00118
`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. IPR2015-00118
`Patent 8,023,580
`
`___________________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
`
`Page
`
`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 ‘519 IPR. .............. 4
`
`The ‘118 Petition Is A Response To The Board’s
`Decision Denying Institution of Challenged Claims in the
`‘519 IPR And Should Be Denied On Procedural and
`Policy Grounds. ........................................................................ 12
`
`III. OVERVIEW OF THE ‘580 PATENT ......................................................... 14
`
`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART ...... 15
`
`A. A Person Having Ordinary Skill In The Art ...................................... 16
`
`B.
`
`Claim Construction............................................................................. 17
`
`1.
`
`2.
`
`“First Modulation Method” and “Second Modulation
`Method” ................................................................................... 18
`
`“Multipoint Communications Protocol,” “Master,” And
`“Slave” ..................................................................................... 21
`
`-i-
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`
`V.
`
`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
`
`THERE IS NO REASONABLE LIKELIHOOD THAT ANY OF
`THE CLAIMS 23, 25, 30, AND 41 ARE RENDERED OBVIOUS
`BY U.S. PATENT NO. 5,706,428 (“BOER”) OR THAT CLAIM 29
`IS RENDERED OBVIOUS BY THE COMBINATION OF
`ALLEGED APA AND BOER ..................................................................... 24
`
`A. Alleged Admitted Prior Art (“APA”) ................................................ 24
`
`B.
`
`C.
`
`Summary Of Boer (Ex. 1304) ............................................................ 25
`
`The Petition Does Not Demonstrate A Reasonable Likelihood
`That Claims 23, 25, Or 30 Are Obvious In View of Boer ................. 29
`
`1.
`
`2.
`
`3.
`
`Claim 23 ................................................................................... 29
`
`Claim 25 ................................................................................... 31
`
`Claim 30 ................................................................................... 32
`
`D.
`
`The Petition Does Not Demonstrate A Reasonable Likelihood
`That Claim 29 Is Obvious In View of APA and Boer ....................... 32
`
`1.
`
`2.
`
`Petition Does Not Demonstrate Any Motivation To
`Combine Boer With APA. ....................................................... 32
`
`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Claim 29 Is Rendered Obvious By APA
`In View of Boer........................................................................ 38
`
`E.
`
`Petition Does Not Demonstrate A Reasonable Likelihood That
`Claim 41 Is Obvious Over Boer ......................................................... 42
`
`VI. CONCLUSION ............................................................................................. 44
`
`
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`-ii-
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
`
`TABLE OF AUTHORITIES
`
`
`CASES
`3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365
`(Fed. Cir. 2003) ................................................................................................... 18
`
`Page(s)
`
`In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007) ........................................................ 15
`
`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) ................... 20
`
`Conopco, Inc. dba Unilever v. Proctor & Gamble, IPR2014-00628, Paper 21
`(PTAB Oct. 20, 2014) ........................................................................................... 5
`
`In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464 (Fed. Cir. 1999) ............. 14
`
`Customplay, LLC v. Clearplay, Inc., PR2014-00783, Paper 9
`(PTAB November 7, 2014) ................................................................................... 5
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745
`(Fed. Cir. May 9, 2014) ...................................................................................... 35
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342
`(Fed. Cir. 2012) ................................................................................................... 34
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .......................................... 34, 35
`
`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) ..................................................... 34
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 19
`
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) ..................................... 14
`
`-iii-
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`Unilever, Inc. v. Proctor & Gamble, IPR2014-00506 Paper 17
`(PTAB July 7, 2014) ............................................................................................. 5
`
`Voris v. Eikel, 346 U.S. 328 (1953) ................................................................... 10, 11
`
`In re Weiler, 790 F.2d 1576 (Fed. Cir. 1986) .......................................................... 10
`
`Wowza Media Systems, LLC et al. v. Adobe Systems Inc., IPR2013-00054,
`Paper 12 (PTAB April 8, 2013) .......................................................................... 34
`
`Zimmer Holdings et al. v. Bonutti Skeletal Innov., IPR2014-01080, Paper 17
`(PTAB Oct. 31, 2014) ........................................................................................... 5
`
`STATUTES
`35 U.S.C. § 103(a) .................................................................................................... 6
`
`35 U.S.C. § 251 ........................................................................................................ 10
`
`35 U.S.C. §315(c) ...................................................................................................... 2
`
`35 U.S.C. §325(d) ...........................................................................2, 3, 4, 5, 6, 9, 10
`
`OTHER AUTHORITIES
`
`37 C.F.R. §§ 41 and42.71 ........................................................................................ 12
`
`37 C.F.R. § 42.100(b) .............................................................................................. 14
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) ......................................................... 14
`
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) ........................................................ 9
`
`Manual of Patent Examining Procedure (MPEP) § 2111 ........................................ 15
`
`Manual of Patent Examining Procedure (MPEP) § 2141(II)(C) ............................. 16
`
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`-iv-
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`
`
`Exhibit
`No.
`
`
`2001
`
`2002
`
`2003
`
`2004
`
`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`TABLE OF EXHIBITS
`
`Exhibit Description
`
`Amended Petition for Inter Partes Review of U.S. Patent No.
`8,023,580, IPR2014-00519, Paper 4 (PTAB, April 3, 2014).
`
`IPR2013-00519, 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).
`
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
`
`Patent Owner Rembrandt Wireless Technologies, LP (“Rembrandt”) hereby
`
`
`
`submits this Preliminary Response to the Petition for Inter Partes review (referred
`
`to herein as “the ‘118 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 23, 25, 29, 30 and 41
`
`(“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 IPR2014-00519 (“the ‘519 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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`
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`motion for joinder (Paper 3) with the ‘519 IPR. Patent Owner filed its opposition
`
`to the motion for joinder (Paper 8, “Opposition”) on November 8, 2014. 1
`
`This ‘118 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 ‘519 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 ‘118 Petition is a response to the
`
`Board’s Decision in the ‘519 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 the Petitioner failed to do. Permitting institution
`
`
`1Patent 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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`-2-
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`would not only be contrary to the rules of the proceedings 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 ‘519 IPR, Petitioner 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 IPR2014-00519 and
`
`IPR2014-00518 instituting trials with respect to a subset of the claims, but
`
`declining institution with respect to claims 23, 25, 29, 30 and 41 (IPR2014-00519)
`
`and claims 2, 19, 49, 52, 53, and 59 (IPR2014-00518).
`
`-3-
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`IPR2015-00118
`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 “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 ‘519 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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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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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,
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`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 ‘519
`
`IPR. See Petition at e.g., 3 (“These claims [23, 25, 29, 30, and 41] were previously
`
`challenged in IPR2014-00519, but the Board chose not to institute trial on them.”)
`
`(emphasis added). Petitioner does not assert that the Petition is based on any
`
`2Unless otherwise noted, all emphasis formatting throughout the Preliminary
`
`Response is added.
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`-5-
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`change in facts that occurred since the filing of the ‘519 Petition or any arguments
`
`that Petitioner could not have made when filing the ‘519 Petition. Indeed, the
`
`Petition is explicitly a response to the Board’s Decision in the ‘519 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 ‘118 Petition raises the
`
`same grounds against the same challenged claims, and presents essentially the
`
`same arguments, with additional explication based on the Board’s prior rejection,
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`as those the Board fully considered and rejected in the ‘519 IPR. The Board
`
`should not allow Petitioner to reargue its prior position.
`
`As an example, just like in the present ‘118 IPR where Petitioner challenges
`
`claims 23, 25, 30, and 41 as obvious under 35 U.S.C. § 103(a) over Boer (Ex.
`
`1304) and claim 29 as obvious over Admitted Prior Art (“APA”) and Boer,
`
`Petitioner contended in the ‘519 IPR that claims 23, 25, 30, 32, 34, 40-41, and 43-
`
`44 were anticipated or obvious by Boer; and claims 29, 38, and 47 were obvious
`
`over Boer and APA. See Ex. 2001 at 3 and compare with Petition at 3. Claim 23
`
`is an independent claim from which claims 25 and 30 depend. The Board denied
`
`institution on these claims as anticipated by Boer because “Petitioner has not
`
`demonstrated sufficiently that Boer discloses transmitting a third data—subsequent
`
`to a second data transmitted using a second modulation method—that indicates
`
`‘communication has reverted to the first modulation method,’ as recited in claim
`
`23.” Ex. 2002 at 8; see also at 12 (denying institution on claim 41 for “the same
`
`reasons discussed above with respect to the third data transmission limitation of
`
`claim 23”). Similarly, the Board denied institution on claims 25, 30 and 41 as
`
`obvious over Boer finding that “Petitioner has not submitted persuasive argument
`
`or evidence curing the deficiency identified with respect to its anticipation
`
`challenge.” Id. at 9. The Board also denied institution on claim 29 over the
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`combination of Boer and APA “because claim 29 depends from and incorporates
`
`the limitations of claim 23 and Petitioner has not shown that APA cures the
`
`deficiencies of Boer with respect to claim 23.” Id. at 15.
`
`The ‘118 IPR Petition contains prior art arguments substantially similar to
`
`those unsuccessfully advanced by Petitioner in the ‘519 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 ‘519 IPR Petition.
`
`Below is a comparison of the mapping of Boer advanced against claim 23 in
`
`the earlier ‘519 IPR and the follow-on ‘118 IPR. Compare chart from the ‘519
`
`Petition, Ex. 2001 at 18:
`
`with the chart from the ‘118 Petition, Paper 1 at 20:
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`While the formatting has changed, the substance has not. Both petitions
`
`purport to map identical aspects of Boer to the “first data,” “second data,” and
`
`“third data” from claim 23. 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. The same is
`
`true for the other claims challenged.
`
`In the claim charts included both with the second Goodman Declaration (Ex.
`
`1319) and the ‘118 IPR Petition, Petitioner cited to additional passages from Boer
`
`to support the same arguments previously made in the ‘519 IPR Petition. Compare
`
`element [23e], [23f] and 23[g] in the ‘118 IPR Petition and second Goodman
`
`Declaration (Paper 1 at 24-26 and Ex. 1319 at 15-17, respectively) with the same
`
`elements in the ‘519 IPR Petition (Ex, 2001 at 22-24). The same is true for claims
`
`41 and 29 (the references to Boer remained the same, but the description of Boer’s
`
`passages is truncated); the claim charts for claims 25 and 30 remained unchanged.
`
`Armed with the Board’s guidance on the deficiencies in the ‘519 IPR,
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`Petitioner renewed its attempt to invalidate claims 23, 25, 29, 30 and 41 based on
`
`the same ground of Boer and combination of Boer and APA. In this Petition,
`
`however, Petitioner directly responds to the deficiencies identified by the Board,
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`utilizing an additional 38 pages of briefing and adding approximately 40 new
`
`paragraphs to its expert’s declaration.
`
`Petitioner makes no attempt to argue that the information presented in the
`
`‘118 IPR was not available to it at the time of filing the ‘519 IPR. There is simply
`
`no reason why Petitioner should be afforded a “second bite” here. If the Board
`
`accepts Petitioner’s “second bite” of repetitive grounds, it will encourage other
`
`petitioners to engage in a pattern of serial IPR filings.
`
`Denying the ‘118 IPR Petition is also consistent with the legislative intent
`
`behind Section 325(d) –which is to prevent gamesmanship by petitioners filing
`
`petitions in a piecemeal manner. See 157 Cong. Rec. S1042 (daily ed. Mar. 1,
`
`2011) (Statement of Sen. Kyl) (Sen. Kyl stating that § 325(d) “allows the Patent
`
`Office to reject any request for a proceeding, including a request for ex parte
`
`reexamination, if the same or substantially the same prior art or arguments
`
`previously were presented to the Office with respect to that patent.”). Thus,
`
`denying the instant Petition because the same prior art and substantially the same
`
`arguments have been previously considered and rejected by the Board is consistent
`
`with the Congressional intent.
`
`It is anticipated that Petitioner may attempt to argue that the Board should
`
`exercise its discretion to institute because the America Invents Act (the “AIA”) “is
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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`remedial in nature” and “should be construed liberally,” as it did in its reply to the
`
`opposition to its motion for joinder. There, Petitioner stated that:
`
`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).
`
`Paper 9, Reply to Opp. To Joinder, at 3-4.
`
`Any linking of “the AIA” with In re Weiler and Voris v. Eikel is baseless.
`
`First, both In re Weiler and Voris were decided decades before the AIA and have
`
`nothing to do with the AIA. In re Weiler relates to the reissue statute (35 U.S.C. §
`
`251), and Voris v. Eikel relates to the Longshoreman’s and Harbor Workers’
`
`Compensation Act. Petitioner has provided no authority – and Patent Owner is not
`
`aware of any – that the AIA “is remedial in nature” and “should be construed
`
`liberally.” Thus, any notion that the Board should exercise discretion to allow
`
`Petition because the “AIA is remedial in nature” has no basis in the law and should
`
`be rejected.
`
`Moreover, the very reasons Petitioner relies on to claim that the Board
`
`should apply the holdings of those decisions to the AIA and this Petition, viz.,
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`IPR2015-00118
`Preliminary Response
`U.S. Patent No. 8,023,580
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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
`
`seeking efficiency and to reduce litigation costs. Petitioner could have filed its
`
`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 ‘118 Petition Is A Response To The Board’s Decision
`Denying Institution of Challenged Claims in the ‘519 IPR
`And Should Be Denied On Procedural and Policy Grounds.
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`The ‘118 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 ‘519 IPR.
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`See Petition at 10 (“In the prior ‘519 Institution Decision, the Board found that
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`Petitioner had not met its burden regarding claims 23 and 41 because Petitioner did
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`U.S. Patent No. 8,023,580
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`not show that…”; 19 (analysis of the Board’s prior decision regarding claim 23);
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`27 (analysis of the Board’s prior decision regarding claim 41); 37 (analysis of the
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`Board’s prior decision regarding claim 29).
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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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`3Plus, Petitioner unfairly enjoyed 38 additional pages of briefing to address
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`the flaws in its prior arguments with respect to five 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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`Preliminary Response
`U.S. Patent No. 8,023,580
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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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`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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`IV. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`In an inter partes review, claim terms in an unexpired patent are interpreted
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`according to their broadest reasonable construction. 37 C.F.R. § 42.100(b); Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). “The
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`broadest reasonable interpretation of the claims must also be consistent with the
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`interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d
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`1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999). [T]he focus of the inquiry
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`regarding the meaning of a claim should be what would be reasonable from the
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`perspective of one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d
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`1255, 1260 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007);
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`Manual of Patent Examining Procedure (MPEP) § 2111.
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`A. A Person Having Ordinary Skill In The Art
`Petitioner alleges, in a conclusory fashion, that a hypothetical person of
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`ordinary skill in the field of the ‘580 Patent would have had “a Master’s Degree in
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`Electrical Engineering that included coursework in communications systems and
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`networking, and at least five years of experience designing network
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`communication systems.” Paper 1 at 9-10. Petitioner provides no rationale for its
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`definition, including why a Master’s degree in electrical engineering is necessary
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`or why “at least five years of experience” is needed to qualify as one of ordinary
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`skill in the art. Petitioner’s proposed definition is arbitrary and should be rejected.
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`Petitioner’s definition also should be rejected because its use of the open-
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`ended term “at least” without providing a ceiling for the level of experience would
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`include persons who are far over-qualified to be considered of “ordinary skill” in
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`the art. Surely, someone with the proposed Master’s degree and more than 15
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`years of practical experience, for example, is not “a person of ordinary skill in the
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`art” because that person would possess a much higher level of understanding of the
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`technology disclosed in the ‘580 patent than a similar person with five years of
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`experience, yet such a person would meet Petitioner’s definition.
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`Should a trial be instituted, Patent Owner reserves the right to present an
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`alternative definition for a person of ordinary skill in the art, along with additional
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`evidence as to the various factors to be taken into account in determining the level
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`of ordinary skill, such as the type of problems encountered in the art at the time of
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`the invention, the sophistication of the technology, and the education level and
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`professional capabilities of active workers in the field. MPEP § 2141(II)(C).
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`B. Claim Construction
`In the ‘519 IPR Institution Decision, the Board did not determine the scope
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`of the claim terms “first modulation method” and “second modulation method.”
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`Paper 16 at 4. In the ‘118 Petition, citing to the ‘519 IPR Institution Decision,
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`Petitioner stated that “no further comment is deemed necessary given the Board’s
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`earlier decisions.” Paper 1 at 3.
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`The Patent Owner, however, believes that the claim terms “first modulation
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`method” “ (Claims 23, 32, 40, and 41) and “second modulation method” (Claims
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`23, 32, and 40) should be construed.
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`Preliminary Response
`U.S. Patent No. 8,023,580