UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
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`v.
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`APLIX IP HOLDINGS CORPORATION
`Patent Owner
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`____________
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`Case No. IPR2015-00230
`Patent 7,463,245
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
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`v.
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`APLIX IP HOLDINGS CORPORATION
`Patent Owner
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`____________
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`Case No. IPR2015-00230
`Patent 7,463,245
` ____________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION
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`INTRODUCTION
`Petitioner respectfully requests that the Board consider the record, rather than
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`IPR2015-00230
`U.S. Patent No. 7,463,245
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`I.
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`Patent Owner’s (“PO”) characterizations of the record, in determining patentability of
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`U.S. Patent No. 7,463,245 (“the ‘245 Patent”). PO’s observations are misleading,
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`because the observations either mischaracterize the record, or include assertions that
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`are not supported by the record.
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`II. RESPONSES TO OBSERVATIONS
`1.
`The testimony cited in this observation does not support PO’s assertion
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`that Dr. Welch’s opinion is based upon a misunderstanding. See Ex. 2034, Welch Dec.
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`17 Tr. at 6:10-10:25; Ex. 1042, Welch Supp. Decl. at ¶¶ 2-10. To the contrary, the
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`record shows, and Dr. Welch explained, that statements in Dr. Welch’s supplemental
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`declaration are in direct response to specific opinions offered by Dr. MacLean. See id.
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`Previously, Dr. MacLean opined that the delineations must be defined at the
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`application level, and therefore would change from application to application. See,
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`e.g., Ex. 1040, MacLean Tr.at 137:5-13 (Liebenow is not sufficient because Dr.
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`MacLean “just couldn’t find examples of where [Liebenow] ha[d] an application
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`actually define where the delineations were.”) (emphasis added); Ex. 2003, MacLean
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`Decl. at ¶ 66. Now, PO’s position is apparently that the delineations must be
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`changeable from application to application, but do not actually have to change. This
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`attempt to soften Dr. MacLean’s opinion is misplaced, and is different than PO’s
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`IPR2015-00230
`U.S. Patent No. 7,463,245
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`position in its Response. See id.; see also Paper 18, Response at 19 (citing MacLean
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`as support for the proposition that in the ‘245 Patent “delineations themselves are
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`defined, i.e., drawn, at the application level.”). In any event, there is no more support
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`in the ‘245 Patent for the requirement that the delineations must be changeable than
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`there is for the requirement that delineations must change. See, e.g., Ex. 1042, Welch
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`Supp. Decl. at ¶¶ 2-10.
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`2.
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`The testimony cited in this observation does not support PO’s assertions.
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`Dr. Welch testifies that the ‘245 Patent describes computational aspects broadly, and
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`pointed to specific disclosure in the specification that supports his opinion. See Ex.
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`2022, Welch Dec. 17 Tr. at 11:1-15:11; see also Ex. 1001, ‘245 Patent at 14:45-54.
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`3.
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`The testimony cited in this observation does not support PO’s assertions.
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`As Dr. Welch testified, just because the ‘245 Patent allowed that a game developer
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`“could” set up configurations does not mean that the claims must be limited to
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`application-defined delineations. See Ex. 2034, Welch Dec. 17 Tr. at 15:13-17:3; see
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`also id. at 11:1-15:11; Ex. 1001, ‘245 Patent at 14:45-54.
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`4.
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`The testimony cited in this observation does not support PO’s assertions,
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`and PO mischaracterizes Dr. Welch’s testimony by omitting relevant testimony.
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`Looking to the full testimony on this point, Dr. Welch explains that “the description of
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`the invention is the entire patent. Everything from the claims down to the specification
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`and the background is an important part of setting the context of, for example, the
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`U.S. Patent No. 7,463,245
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`later sections….” Ex. 2034, Welch Dec. 17 Tr. at 24:5-19; see also generally id. at
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`23:16-29:4. Dr. Welch also explains that a patent specification would be understood
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`to be like a funnel, where the background sets the stage and context, and the detailed
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`description provides specific examples. See id. at 28:11-29:4. PO’s assertion that
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`paragraph [0002] is not part of Liebenow’s description of the invention is simply
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`untrue, and no part of Dr. Welch’s testimony supports this faulty conclusion. See Ex.
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`1003, Liebenow; see also Ex. 2034, Welch Dec. 17 Tr. at 23:16-29:4.
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`5.
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`The testimony cited in this observation does not support PO’s assertions.
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`Once again, PO was attempting to have Dr. Welch agree to PO’s oversimplifications
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`and generalizations of the record. See Ex. 2034, Welch Dec. 17 Tr. at 29:6-37:4. Dr.
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`Welch was understandably unwilling to agree to PO’s oversimplified view, and the
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`record shows Dr. Welch’s explanation as to why. See id.
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`Respectfully submitted,
`ERISE IP, P.A.
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`/Abran J. Kean/ _
`Eric A. Buresh, Reg. No. 50,394
`Abran J. Kean, Reg. No. 58,540
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`abran.kean@eriseip.com
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`ATTORNEYS FOR PETITIONER
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`BY:
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`IPR2015-00230
`U.S. Patent No. 7,463,245
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 8, 2016 the
`foregoing Petitioner’s Response to Patent Owner’s Motion for Observation was served via
`electronic filing with the Board on the following counsel of record for Patent Owner:
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`Michael Mauriel, USPTO Reg. No. 44,226
`Sherman W. Kahn (pro hac vice)
`MAURIEL KAPOUYTIAN WOODS LLP
`15 West 26th Street, 7th Floor
`New York, NY 10010
`Telephone: (212) 529-5131 Ex. 101
`Facsimile:
`(212) 529-5132
`E-mail:
`mmauriel@mkwllp.com
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`skahn@mkwllp.com
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`Robert J. Gilbertson (pro hac vice)
`Sybil L. Dunlop (pro hac vice)
`X. Kevin Zhao (pro hac vice)
`GREENE ESPEL PLLP
`222 South Ninth Street, Ste. 2200
`Minneapolis, MN 55402
`Telephone: (612) 373-0830
`Facsimile:
`(612) 373-0929
`E-mail:
`bgilbertson@greeneespel.com
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`sdunlop@greeneespel.com
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`kzhao@greeneespel.com
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`Dated: January 8, 2016
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`Respectfully submitted,
`ERISE IP, P.A.
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`/Abran J. Kean/ _
`Eric A. Buresh, Reg. No. 50,394
`Abran J. Kean, Reg. No. 58,540
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`BY:
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`IPR2015-00230
`U.S. Patent No. 7,463,245
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`ATTORNEYS FOR PETITIONER
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