UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________
`
`
`APPLE, INC.
`Petitioner
`v.
`
`E-WATCH, INC.
`Patent Owner
`_______________________________________
`
`Case: IPR2015-00413
`
`Patent No. 7,365,871
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`
`_______________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §42.107
`
`
`
`E‐Watch, Inc.
`Petitioner – Apple, Inc.
`Patent Owner – E‐Watch, Inc.
`IPR2015‐00413
`
`
`________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________
`
`
`APPLE, INC.
`Petitioner
`v.
`
`E-WATCH, INC.
`Patent Owner
`_______________________________________
`
`Case: IPR2015-00413
`
`Patent No. 7,365,871
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`
`_______________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §42.107
`
`
`
`E‐Watch, Inc.
`Petitioner – Apple, Inc.
`Patent Owner – E‐Watch, Inc.
`IPR2015‐00413
`
`
`
`
`TABLE OF CONTENTS
`
`
` I. SUMMARY OF PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONER’S INTER PARTES REVIEW PETITION.............................. 1
`
`II. REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
`INSTITUTED.................................................................................................. 4
`
`A.
`
`B.
`
`C.
`
`PETITIONER USES CUMULATIVE AND REDUNDANT
`PRIOR ART IN ITS PETITION.......................................................... 4
`
`THIS PETITION IS AN IMPROPER SERIAL INTER PARTES
`REVIEW PETITION............................................................................ 5
`
`THERE IS NO RATIONAL UNDERPINNING TO THE
`OBVIOUSNESS ASSERTIONS OF THE PETITION ...................... 8
`
`III. CONCLUSION............................................................................................... 11
`
`CERTIFICATE OF SERVICE..................................................................... 13
`
`
`
`i
`
`
`
`
`
`EXHIBIT LIST
`
`[EXH. 2001] TABLE SHOWING OTHER INTER PARTES REVIEW
`
` PETITIONS WITH PRIOR ART AND/OR ISSUES THAT
`
` OVERLAP WITH IPR2015-00413 PETITION (“this
`
` petition” or “ the ’413 Petition”)
`
`[EXH. 2002] DEFENDANTS’ INVALIDITY CONTENTIONS IN
` PARALLEL DISTRICT COURT LITIGATION
` (REDACTED VERSION)
`
`ii
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`SUMMARY OF PATENT OWNER’S PRELIMINARY
`RESPONSE TO PETITIONER’S INTER PARTES REVIEW
`PETITION
`e-Watch, Inc. (“e-Watch”) is the owner of United States Patent No.
`
`
`
`7,365,871 (“’871 Patent”). Eleven (11) inter partes review (“IPR”) petitions have
`
`been filed related to the ‘871 Patent. The table below provides an update on the
`
`petitioners/real parties-in-interest, status and filing date of each of these
`
`Case Number
`
`Status
`
`Filing Date
`
`IPR2014-00439
`
`Terminated
`
`2/18/2014
`
`IPR2014-00987
`
`Instituted
`
`6/19/2014
`
`IPR2015-00402
`
`No Decision on
`Institution
`
`12/10/2014
`
`proceedings.
`
`Petitioner/Real
`Parties-in-Interest
`Iron Dome LLC,
`RozMed LLC, Steven
`S. Yu (collectively,
`“Iron Dome”)
`HTC Corporation and
`HTC America, Inc.
`(collectively, “HTC”)
`LG Electronics, Inc.,
`LG Electronics
`U.S.A., Inc., LG
`Electronics
`Mobilecomm U.S.A.,
`Inc. (collectively,
`“LG”); Microsoft
`Mobile OY,
`Microsoft
`Corporation, Nokia
`Inc. (collectively,
`“MMO”); Sony
`Corporation, Sony
`Mobile
`Communications
`(USA) Inc., Sony
`
`
`
`1
`
`
`
`Mobile
`Communications AB,
`Sony Mobile
`Communications Inc.
`(collectively,
`“Sony”); Sharp
`Corporation and
`Sharp Electronics
`Corporation
`(collectively,
`“Sharp”)
`Kyocera
`Communications, Inc.
`(“Kyocera”)
`LG, MMO, Sony and
`Sharp
`Apple Inc. (“Apple”)
`
`Apple
`
`Apple
`
`Samsung Electronics
`Co., Ltd and Samsung
`Electronics America,
`Inc. (collectively,
`“Samsung”)
`Samsung
`
`Samsung
`
`
`
`
`IPR2015-00406
`
`IPR2015-00404
`
`IPR2015-00411
`
`IPR2015-00412
`
`IPR2015-00413
`
`IPR2015-00541
`
`No Decision on
`Institution
`
`No Decision on
`Institution
`No Decision on
`Institution
`No Decision on
`Institution
`No Decision on
`Institution
`Joined With 2014-
`00987
`
`12/10/2014
`
`12/10/2014
`
`12/11/2014
`
`12/11/2014
`
`12/11/2014
`
`1/7/2015
`
`IPR2015-00610
`
`IPR2015-00612
`
`No Decision on
`Institution
`No Decision on
`Institution
`
`1/23/2015
`
`1/23/2015
`
`These eleven (11) IPR petitions have substantial overlap with respect to the
`
`prior art cited and associated grounds of unpatentability. Even to the extent
`
`different prior art is cited in some of these petitions, the prior art relied on in some
`
`of the petitions is similar to the prior art contained in some of the other petitions.
`
`
`
`2
`
`
`
`As a result, many of these petitions, including this petition (i.e., IPR2015-00413),
`
`are redundant and present cumulative prior art and substantially the same
`
`arguments as other earlier-filed IPR petitions, concurrently-filed IPR petitions,
`
`and/or later-filed IPR petitions. The Patent Trial and Appeals Board (“PTAB”)
`
`should exercise its discretion under 35 U.S.C. 325(d) to deny institution of this
`
`petition for this reason alone.
`
`
`
`Furthermore, on December 10, 2015, Apple filed an IPR petition, IPR2015-
`
`00411, related to the ‘871 Patent. Because the prior art cited in the present
`
`petition, IPR2015-00413, was expressly cited in Apple’s invalidity contentions,
`
`served in the parallel district court litigation on June 17, 2014, Apple cannot
`
`establish that the newly relied on prior art of the present petition, IPR2015-00413,
`
`was not known and available to the petitioner when it filed its original petition in
`
`IPR2015-00411 on December 10, 2014. The Board has condemned this type of
`
`serial IPR petitioning as unfair to the patent owner and contrary to the interests of
`
`economy and efficiency promoted in IPR proceedings and has routinely denied
`
`institution of serial IPRs. Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628
`
`(paper 21 at 11). The PTAB should similarly deny institution of this petition.
`
`
`
`Petitioner has also failed to provide an articulated reasoning with some
`
`rational underpinning for why a person of ordinary skill in the art would attempt to
`
`combine the primary and secondary references of this petition. Because Petitioner
`
`
`
`3
`
`
`
`fails to identify a single alleged deficiency of disclosure in the primary reference, it
`
`does not provide a rationale underpinning for the combination of references to
`
`arrive at the invention of the ‘871 Patent.
`
`
`
`
`
`
`II. REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
`
`INSTITUTED
`A. PETITIONER USES CUMULATIVE AND REDUNDANT
`PRIOR ART IN ITS PETITION
`The Board has discretion to decline to institute inter partes review.
`
`Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628 (paper 21 at 5).
`
`Institution of inter partes review is discretionary, not mandatory. 35 U.S.C.
`
`§314(a). “One factor the Board may take into account when exercising that
`
`discretion is whether ‘the same or substantially the same prior art or arguments
`
`previously were presented to the Office.’” Conopco, Inc. v. Procter & Gamble
`
`Co., IPR2014-00628 (paper 21 at 5). U.S.C. §325(d) provides:
`
`In determining whether to institute or order a proceeding
`under this chapter [post-grant review (PGR)], chapter 30
`[ex parte reexamination] or chapter 31 [inter partes
`review (IPR)], the Director may take into account
`whether, and reject the petition or request because, the
`same or substantially the same prior art or arguments
`previously were presented to the Office.
`
`
`
`As shown in the table attached as Exh. 2001, this petition overlaps with two
`
`(2) other petitions related to the ‘871 Patent. [Exh. 2001]. In particular, this
`
`
`
`4
`
`
`
`petition includes prior art and issues that have been presented to the PTAB by
`
`another petitioner in earlier-filed IPR2014-00439 and by this Petitioner in
`
`concurrently filed IPR-2015-00412. IPR2014-00439 relies upon the cited prior art
`
`reference U.S. 6,122,526 (Parulski ‘526) in at least one proposed ground of
`
`unpatentability and this petition relies upon the cited prior art U.S. 5,666,159
`
`(Parulski ‘159) in at least one proposed ground of unpatentability. Parulski ‘526 is
`
`a divisional application of Parulski ‘159, sharing common written description and
`
`drawings. Moreover, IPR2015-00412 and this petition both rely upon the cited
`
`prior art reference US 5,491,507 (Umezawa) in at least one proposed ground of
`
`unpatentability.
`
`B. THIS PETITION IS AN IMPROPER SERIAL INTER
`PARTES REVIEW PETITION
`Petitioner has already had the proverbial “first bite at the apple.” In
`
`
`
`challenging the ‘871 patent, Petitioner filed IPR petition IPR2015-00411 (“the
`
`‘411 Petition” or “its original petition”) against the ‘871 Patent. Petitioner made
`
`the choice of presenting a single ground of unpatentability in the ‘411 Petition,
`
`which is anticipation of all claims of the ‘871 Patent by a United States patent
`
`publication. Thereafter, Petitioner filed this petition, IPR2015-00413 and again
`
`made the choice to present a single ground of unpatentability, which is that claims
`
`
`
`5
`
`
`
`1-3, 5-7, 12 and 14 are obviousness over two cited prior art references (i.e.,
`
`Parulski’ 159 in view of Umezawa).
`
`
`
`One of the pieces of prior art (Umezawa) cited in this petition (IPR2015-
`
`00413) was expressly cited in Petitioner’s invalidity contentions served in a
`
`parallel district court litigation on June 17, 2014 [Exh. 2002 at 7]. While the other
`
`piece of prior art (Parulski ‘159) used in this petition was not cited in these
`
`invalidity contentions, Parulski ‘526, a divisional of Parulski ‘159 that shares a
`
`common specification with Parulski ‘159, was also expressly cited therein. [Exh.
`
`2002 at 8]. Petitioner clearly knew about the prior art cited in this petition when it
`
`filed its original petition in IPR2015-00411 on January 7, 2015 but chose not to
`
`include this prior art in its original petition (IPR2015-00411).1 In instances such as
`
`this, the Board has condemned serial IPR petitioning as unfair to the patent owner
`
`and contrary to the interests of economy and efficiency promoted in IPR
`
`proceedings. Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628 (paper 21
`
`at 11). In Conopco, the PTAB held:
`
`Additional factors support our decision declining to
`institute review. Unilever does not argue that the other
`references applied in the instant Petition-Cosmedia, Bar-
`Shalom, or Uchiyama—were unknown or unavailable at
`
`1 Petitioner also filed a third IPR of the ‘871 Patent, 2015IPR-00412, after its filing of its original
`petition, citing U.S. Pat. No. 5,550,754 (McNelley) and U.S. Pat. No. 5,491,507 (Umezawa) as
`prior art. This prior art was also known to Petitioner at the time it filed its original petition. Exh.
`2002 at 8, 7, respectively.
`
`
`
`6
`
`
`
`the time of filing the 510 Petition. That fact supports a
`reasonable inference that those references were known
`and available to Unilever when it requested review the
`first time. Prelim. Resp. 1, 7. On this record, the
`interests of fairness, economy, and efficiency support
`declining review—a result that discourages the filing of a
`first petition that holds back prior art for use in
`successive attacks, should the first petition be denied.
`See id. at 1 (the instant Petition “simply swap[s] in new
`references, all of which were available to Unilever” at the
`time of filing of the 510 Petition; Unilever should have
`“presented its ‘best case’ in the first petition”).
`
`Id. The Board determined that its resources were better spent addressing
`
`
`
`matters other than Unilever’s second attempt to raise a plurality of duplicative
`
`grounds against the same patent claims. Id., citing Heckler v. Chaney, 470 U.S.
`
`821, 831 (1985) (when deciding whether to take action in a particular matter, an
`
`agency must determine whether its resources are best spent on one matter or
`
`another).
`
`
`
`The PTAB has reached the same conclusion to deny institution of serial IPR
`
`proceedings in other instances as well. Butamax Advanced Biofuels LLC v. Gevo,
`
`Inc., IPR2014-00581 (Paper 8 at 13) (“Allowing similar, serial challenges to the
`
`same patent, by the same petitioner, risks harassment of patent owners and
`
`frustration of Congress’s intent in enacting the Leahy-Smith America Invents
`
`Act.”) See H.R. Rep. No. 112-98, pt. 1 at 48 (2011) (“While this amendment is
`
`intended to remove current disincentives to current administrative processes, the
`
`
`
`7
`
`
`
`changes made by it are not to be used as tools for harassment or a means to prevent
`
`market entry through repeated litigation and administrative attacks on the validity
`
`of a patent. Doing so would frustrate the purpose of the section as providing quick
`
`and cost effective alternatives to litigation.”)
`
`
`
`Petitioner has already filed a petition to review the ‘871 Patent via IPR
`
`proceedings. Petitioner’s attempt to harass e-Watch with repeated administrative
`
`attacks on the ‘871 Patent should be denied.
`
`
`
`C.
`
`THERE IS NO RATIONAL UNDERPINNING TO THE
`OBVIOUSNESS ASSERTIONS OF THE PETITION
`
`
`
`Petitioner presents as the sole ground of unpatentability in this petition that
`
`claims 1-3, 5-7, 12 and 14 (“the challenged claims) are unpatentable under pre-
`
`AIA 35 U.S.C. §103(a) over Parulski (i.e., Parulski ‘159) in view of Umezawa. @
`
`‘412 Petition; page 9. However, Petitioner asserts that Parulski teaches all
`
`elements and limitations of every one of the challenged claims. Specifically, in
`
`every instance where combination of Umezawa with Parulski is “suggested” by
`
`Petitioner in the ‘413 Petition, Petitioner makes the following statement or
`
`equivalent statement:
`
`An argument might be made by the Patent Owner that
`Parulski does not explicitly or inherently teach this claim
`feature. It does, but even if it did not, the claim feature is
`explicitly taught in Umezawa. @’413 Petition; pages 25,
`
`
`
`8
`
`
`
`29, 31, 32, 33, 34, 35, 39, 41, 42, 44, 48, 50, 51, 53.
`(emphasis added).
`
`Petitioner believes that all of the challenged claims are anticipated by
`
`Parulski. Petitioner never identifies any element or limitation that Parulski fails to
`
`teach. Moreover, Petitioner’s stated reason for asserting that the challenged claims
`
`are unpatentable under pre-AIA 35 U.S.C. §103(a) over Parulski in view of
`
`Umezawa is because of what it believes Patent Owner might do in responding to
`
`this petition (i.e., “An argument might be made by the Patent Owner that Parulski
`
`does not explicitly or inherently teach this claim feature”).
`
`Petitioner has not articulated a sufficient reasoning or rational underpinning
`
`for the proposed combination of references necessary to support a legal conclusion
`
`of obviousness. As required by MPEP 2143.01, obviousness can be established by
`
`combining or modifying the teachings of the prior art to produce the claimed
`
`invention where there is some teaching, suggestion, or motivation to do so. In re
`
`Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (discussing
`
`rationale underlying the motivation-suggestion-teaching test as a guard against
`
`using hindsight in an obviousness analysis). ‘‘‘[R]ejections on obviousness cannot
`
`be sustained by mere conclusory statements; instead, there must be some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,418
`
`
`
`9
`
`
`
`(2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir.
`
`2006)).
`
`Petitioner has made an assertion of the challenged claims being anticipated
`
`by Parulski and then made a failed attempt to justify why a person of ordinary skill
`
`in the art (“POSITA” (i.e., POSA as referred to by Petitioner)), in general, would
`
`be motivated to combine the teachings of Umezawa with that of Parulski. Petition
`
`@ 12-14. This creates confusion for the Patent Owner in responding to the
`
`proposed ground of unpatentability. The manner in which the sole ground of
`
`rejection is presented leaves the Patent Owner unsure of whether it is responding to
`
`an obviousness or anticipation argument.
`
`If Parulski allegedly discloses all limitations of the ‘871 Patent, Umezawa is
`
`superfluous and need not be addressed, and the proposed ground of unpatentability
`
`should have been presented under 35 U.S.C. §102. However, if Parulski is lacking
`
`disclosure of certain limitations of the ‘871 Patent claims, Patent Owner needs to
`
`know specifically which limitations Petitioner alleges are lacking in Parulski and
`
`must be found in Umezawa to assess whether a POSITA would combine Umezawa
`
`with Parulski to cure the specific deficiency of Parulski and whether the missing
`
`disclosure is actually found in Umezawa. For example, Petitioner’s assertion that
`
`Parulski discloses all limitations of all claims of the ‘871 Patent actually suggests
`
`
`
`10
`
`
`
`that a POSITA would not be motivated to combine the teachings of Umezawa with
`
`that of Parulski because the POSITA would recognize that such an endeavor would
`
`be pointless because all limitations allegedly would already be disclosed by
`
`Parulski alone.
`
`In this respect, Petitioner’s alleged obviousness grounds with respect to
`
`Parulski and Umezawa are based solely on “mere conclusory statements” (KSR,
`
`550 U.S. at 418 (quoting Kahn, 441 F.3d at 988)) and fail to present any cogent
`
`reasoning as to why a person of ordinary skill in the art would think to combine
`
`these two references to arrive at the claimed invention as recited in the challenged
`
`claims. These types of allegations fail to provide the specificity required by MPEP
`
`2143.01 and by 37 C.F.R. §42.104 (b)(4,5). As such, with respect to Petitioner’s
`
`ground for unpatentability of the challenged claims as being obvious over the
`
`combination of Parulski and Umezawa, Petitioner has failed to meet its burden of
`
`proving a proposition of unpatentability of the challenged claims as required by 35
`
`U.S.C. § 316(e).
`
`III. CONCLUSION
`The PTAB should exercise its discretion under 35 U.S.C. § 325(d) to deny
`
`
`
`institution of this petition because it is cumulative and redundant of other IPR
`
`matters on the ‘871 Patent and represents an inappropriate and disfavored serial
`
`attack by Petitioner on the same patent it has already challenged in other IPR
`
`
`
`11
`
`
`
`proceedings. Moreover, Petitioner has failed to provide an articulated reasoning
`
`with some rational underpinning for why a POSITA would attempt to combine
`
`Parulski and Umezawa.
`
`
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`
`
`Lead Counsel:
`Robert C. Curfiss
`Reg. No. 26,540
`Attorney
`19826 Sundance Drive
`Humble, Texas 77346
`Telephone: (832) 573-1442
`Facsimile: (832) 644-6152
`
`
`
`
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`
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`
`
`
`Respectfully Submitted,
`
`/David O. Simmons/
`
`
`Back-Up Counsel:
`David O. Simmons
`Reg. No. 43,124
`Patent Agent
`P. O. Box 26584
`Austin, Texas 78755
`Telephone: (512) 345-9767
`Facsimile: (512) 345-0021
`
`
`
`12
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`APPLE, INC.
`Petitioner
`v.
`
`E-WATCH, INC.
`Patent Owner
`_______________________________________
`
`Case: IPR2015-00413
`
`Patent No. 7,365,871
`
`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
`___________________________________
`
`CERTIFICATE OF SERVICE
`
`A Certificate of Service in compliance with 37 CFR §42.205 is attached to the Patent Owner
`Preliminary Response, certifying that a copy of the Patent Owner Preliminary Response in its
`entirety has been served on Petitioner as detailed below.
`
`Date of Service: April 10, 2015
`
`Manner of Service:
`email with consent of Petitioner
`
`Document(s) Served:
`Patent Owner Preliminary Response for IPR2015-00413
`
`
`Exhibit EXH. 2001-2002
`bburoker@gibsondunn.com
`
`Person(s) Served:
`bsilver@gibsondunn.com
`
`
`
` Gibson, Dunn & Crutcher LLP
`
`
`1050 Connecticut Avenue, N.W.
`
` Washington, D.C. 20036-5306
`
`
`
`
`
`/Robert C. Curfiss/
`Reg. No. 26,540
`
`
`
`13
`
`
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