UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`IRON DOME LLC
`Petitioner
`v.
`
`E-WATCH,INC.
`Patent Owner
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`Case: IPR2014-00439
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`Patent No. 7,365,871
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`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
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`REVISED PATENT OWNER'S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §42.107
`
`Apple Inc.
`EXHIBIT 1012
`Petitioner: Apple Inc. I Patent Owner: E-Watch, Inc.
`IPR NO. 2015-00414
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`TABLE OF CONTENTS
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`I.
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`SUMMARY OF PATENT OWNER’S PRELIMINARY
`RESPONSE TO PETITIONER’S INTER PARTES REVIEW
`PETITION....……..……….………………………………………. 1
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`II.
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`REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
`INSTITUTED...……………………….………..………………….2
`A. Failure To Present Facts Supporting Insufficiency Of
` Swear Behind Affidavit ……………………………………... 2
`B. One Or More Relied Upon Patent Publications Are
` Specifically Antedated……………………………………….... 5
`C. Petitioner’s Assessment Of The Swear Behind Affidavit
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`Is Flawed ………………………………………………….....…7
`III. CONCLUSION...........…………………….…………......….........11
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`CERTIFICATE OF SERVICE…....…………………….……......12
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`EXHIBIT LIST
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`As-filed 1.131 Affidavit from U.S. patent application serial
`no. 10/336,470 (“Swear Behind Affidavit”) (part 1)
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`As-filed 1.131 Affidavit from U.S. patent application serial
`no. 10/336,470 (“Swear Behind Affidavit”) (part 2)
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`[EXH. 2001]
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`[EXH. 2002]
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`[EXH. 2003]
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`Office Action indicating sufficiency of the Swear Behind
`Affidavit.
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`[EXH. 2004]
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`U.S. patent no. 5,666,159 (“Parulski ‘159 Patent”)
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`[EXH. 2005]
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`U.S. patent no. 5,943,603 (“Parulski ‘603 Patent”)
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`[EXH. 2006]
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`Artifact sheet from U.S. patent application serial no.
`10/336,470 (“Artifact Sheet”)
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`[EXH. 2007]
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`Unscanned artifacts from Swear Behind Affidavit (“Unscanned
`Artifacts”)
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`I.
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`SUMMARY OF PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITIONER’S INTER PARTES REVIEW PETITION
`Pursuant to 37 C.F.R. §42.107, E-Watch Inc. (“E-Watch”) respectfully submits
`this Preliminary Response to the petition for inter partes review (“Petition”) filed by
`Iron Dome LLC (“Petitioner”). On February 28, 2014, the Petition was filed with
`the United States (U.S.) Patent and Trademark Appeals Board (“PTAB”) of the U.S.
`Patent and Trademark Office (“USPTO”) pursuant to 35 U.S.C §314, requesting
`institution of inter partes review of U.S. patent no. 7,365,871 (“E-Watch ‘871
`Patent”), owned by E-Watch and having been issued from U.S. patent application
`serial no. 10/336,470 (“E-Watch ‘470 Application”). In response to the filing of
`the Petition, the PTAB has opened inter partes review case no. IPR2014-00439
`(“subject IPR case”). The PTAB issued its Notice of Filing Date (“Filing Date
`Notice”) on March 4, 2014 and, thus, the preliminary response is due on June 4,
`2014. For the reasons set forth below, institution of inter partes review as requested
`in the Petition should not be granted, and the Petition should be dismissed in its
`entirety.
`Pursuant to 37 C.F.R. §42.108(c), inter partes review shall not be instituted for
`a ground of unpatentability unless the Board (i.e., the PTAB) decides that the
`petition supporting the ground would demonstrate that there is a reasonable
`likelihood that at least one of the claims challenged in the Petition is unpatentable.
`Petitioner based its request for inter partes review on one or more U.S. patents that
`have been previously antedated with respect to the claimed invention of the E-
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`Watch ‘871 Patent through the filing of an affidavit in accordance with 37 C.F.R.
`§1.131 (i.e., the Swear Behind Affidavit) during prosecution of the E-Watch ‘470
`Application. Moreover, Petitioner relied on an incomplete version of the Swear
`Behind Affidavit and consequently failed to consider or provide critical evidence
`included in the complete version of the Swear Behind Affidavit. The evidence not
`considered by Petitioner supported the Patent Examiner’s decision that the Swear
`Behind Affidavit was sufficient for specifically overcoming certain patents
`disclosed therein. Because this evidence presented in the complete version of the
`Swear Behind Affidavit was fully considered by the Patent Examiner, the patents
`cited and relied upon by Petitioner are clearly and properly antedated and cannot be
`considered as a basis for rejection of the claims of the E-Watch ‘871 Patent. As
`required by 37 C.F.R. §42.108(c), Petitioner has failed to demonstrate a reasonable
`likelihood that it will prevail in showing that any challenged claim of the E-Watch
`‘871 Patent is unpatentable under 35 U.S.C. §102 or §103 based on the cited prior
`art. Specifically, Petitioner is relying on art that cannot be considered as prior art
`because the Swear Behind Affidavit accepted by the Patent Examiner has confirmed
`that the invention predates this art.
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`II. REASONS WHY INTER PARTES REVIEW SHOULD NOT BE
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`INSTITUTED
`A. Failure To Present Facts Supporting Insufficiency Of Swear Behind
` Affidavit
` As required by 37 C.F.R. §42.108(c), inter partes review shall not be instituted
`for a ground of unpatentability unless the Board decides that the petition supporting
`the ground would demonstrate that there is a reasonable likelihood that at least one of
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`the claims challenged in the Petition is unpatentable. In order to meet this requirement
`Petitioner must, at a minimum, cite and explain prior art that Petitioner believes would
`anticipate or render obvious at least one of the claims challenged in the Petition. In the
`present instance, Petitioner relied on one or more patent references that were
`previously determined to be antedated through the filing of the Swear Behind
`Affidavit [EXH. 2001(Part 1) and EXH. 2002(Part2)]. Such references are not prior
`art.
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`Moreover, Petitioner has not identified any defect in the Swear Behind Affidavit
`with respect to the requirements of such an affidavit under 37 C.F.R. §1.131. Rather,
`Petitioner simply made general statements regarding the sufficiency of the Swear
`Behind Affidavit and suggested that evidence of conception, diligence, and reduction
`to practice presented in the Swear Behind Affidavit should be subject to more scrutiny.
`(See page 5, lines 13-18 of the Petition). Petitioner, however, made this statement
`without even reviewing
`the complete Swear Behind Evidence, concluding
`insufficiency while ignoring evidence of public record. For this reason alone, the Inter
`Partes Review should not be instituted because Petitioner has not presented any
`specific basis to challenge the sufficiency of the Swear Behind Affidavit. Absent such
`a basis, Petitioner has failed to demonstrate there is a reasonable likelihood that at least
`one of the claims challenged in the Petition is unpatentable.
`In the Swear Behind Affidavit, the Applicant disclosed many patents and patent
`publications that he intended to antedate, some of which were cited by the Examiner
`during prosecution of the ‘470 Application and/or during prosecution of related U.S.
`application serial no. 10/326,503 (“E-Watch ‘503 Application”). In addition, in the
`Swear Behind Affidavit, the Applicant also included many other patents and patent
`publications that were not specifically cited by the Examiner during prosecution of the
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`E-Watch ‘470 Application or the E-Watch ‘503 Application. As stated in the Swear
`Behind Affidavit, the patents and patent publications that were not specifically cited
`by the Examiner during prosecution of the E-Watch ‘470 Application or the E-Watch
`‘503 Application were disclosed in the interest of thoroughness with respect to all
`relevant prior art known by the inventor at the time of filing the Swear Behind
`Affidavit.
`During the prosecution of the E-Watch ‘871 Patent, the USPTO found the Swear
`Behind Affidavit to be sufficient to overcome the Parulski ‘159 Patent. The USPTO’s
`acceptance of the Swear Behind Affidavit in overcoming the Parulski ‘159 Patent
`during prosecution of the E-Watch ‘871 Patent is an express acknowledgment that the
`evidence presented in support of the Swear Behind Affidavit represents a showing of
`facts that, in character and weight, established reduction to practice prior to April 24,
`1995, or conception of the invention prior to April 24, 1995 coupled with due
`diligence from prior to said date to subsequent reduction to practice and the filing of
`the E-Watch ‘470 Application. The sufficiency of the Swear Behind Affidavit was
`acknowledged by the USPTO in the Office Action mailed August 9, 2005 during
`prosecution of the E-Watch ‘470 Application, a copy of which is provided herewith
`as Exhibit 3 [EXH. 2003]. Accordingly, the Patent Owner respectfully submits that
`the Swear Behind Affidavit overcomes all qualified patents and patent publications
`having an effective date of April 24, 1995 or later. Such qualified patents and patent
`publications are defined as those patents and published patent applications that meet
`requirements of 35 U.S.C. §102(a) and 35 U.S.C. §102(e) for being sworn around, that
`are not prior art under 35 U.S.C. §102(b), and that do not claim the same invention as
`the E-Watch ‘871 Patent.
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`B. One Or More Relied Upon Patent Publications Are Specifically
` Antedated
`Petitioner has challenged claims 1-15 of the E-Watch ‘871 Patent (i.e., the
`Challenged Claims) on the grounds of obviousness over the combination of two
`U.S. Patents – U.S. patent no. 6,122,526 (“Parulski ‘526 Patent”) in view of U.S.
`patent no. 5,893,037 (“Reele ’037 Patent”). Pursuant to 37 C.F.R. §42.108(c), inter
`partes review shall not be instituted for a ground of unpatentability unless the Board
`decides that the petition supporting the ground would demonstrate that there is a
`reasonable likelihood that at least one of the claims challenged in the Petition is
`unpatentable. At least one of the patents relied upon in the grounds of obviousness
`has been properly antedated through the submission of the Swear Behind Affidavit,
`which includes suitable evidence describing acts of conception, diligence, and
`reduction to practice. Accordingly, institution of inter partes review as requested in
`the Petition should not be granted, and the Petition should be dismissed in its
`entirety.
`As an initial matter, a characterization of one of the patents relied upon in the
`Petition must be clarified. Petitioner states that neither the Parulski ‘526 Patent nor
`the Reele ‘037 Patent were specifically applied in a rejection against the claims
`during prosecution of the application from which the E-Watch ‘871 Patent issued
`(i.e. the E-Watch ’470 Application). Although the Parulski ‘526 Patent was not
`specifically applied during
`the original prosecution of
`the E-Watch ’470
`Application, U.S. patent no. 5,666,159 (“Parulski ‘159 Patent”) [EXH. 2004] was
`applied to claims in the E-Watch ’470 Application. The Parulski ‘526 Patent was
`granted from U.S. application serial no. 09/232,594 (“Parulski ‘594 Application”).
`The Parulski ‘594 Application is a continuation application of U.S. application serial
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`no. 08/842,458 (“Parulski ‘458 Application”) from which U.S. patent no. 5,943,603
`(“Parulski ‘603 Patent”) [EXH. 2005] issued. The Parulski ‘458 Application is a
`divisional application of U.S. application serial no. 08/426,993 (“Parulski ‘993
`Application”) from which the Parulski ‘159 Patent issued. Accordingly, the
`disclosures of the Parulski ‘526 Patent are the same as that of the Parulski ‘159
`Patent because they share a common specification and, thus, there is no distinction
`in the subject matter of the Parulski ‘159 and ‘526 Patents. Therefore, the complete
`disclosure of these patents was, in fact, considered by the Patent Examiner when he
`reviewed the disclosure of the Parulski ‘159 patent.
` The Patent Owner filed the Swear Behind Affidavit [EXH. 2001(Part 1) and
`EXH. 2002 (Part 2)] under 37 C.F.R. §1.131 for the purpose of swearing behind the
`Parulski ‘159 Patent and the Reele ‘037 Patent, as well as other patents and patent
`publications, during original prosecution of the E-Watch ’470 Application. The
`Parulski ‘159 Patent and the Reele ‘037 Patent, as well as the Parulski ‘603 Patent
`and the Parulski ‘526 Patent, meet requirements of 35 U.S.C. §102(a) and 35 U.S.C.
`§102(e) for being sworn around, are not prior art under 35 U.S.C. §102(b) and
`neither disclose nor claim the same invention as the E-Watch ‘871 Patent. The Swear
`Behind Affidavit presented evidence associated with the conception, diligence and
`reduction to practice of the claimed invention of the E-Watch ’470 Application.
` The Swear Behind Affidavit considered by the Examiner of the E-Watch ’470
`Application was found to be sufficient to antedate the Parulski ‘159 Patent and other
`prior art cited during prosecution of the E-Watch ‘470 Application (See Exhibit
`[EXH. 2003]). In view of the Parulski ‘526 Patent both sharing a common
`specification with the Parulski ‘159 Patent (i.e., not including any new or different
`subject matter as compared to the Parulski ‘159 Patent) and being expressly cited in
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`the Swear Behind Affidavit, the Parulski ‘526 Patent is similarly and inherently
`antedated by the Swear Behind Affidavit.
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`C. Petitioner’s Assessment Of The Swear Behind Affidavit Is Flawed
`In requesting cancellation of the Challenged Claims on the grounds of
`obviousness, Petitioner has relied upon one or more patents that are subject to the
`Swear Behind Affidavit. To this end, Petitioner has brought into question the
`sufficiency of the evidence of conception, diligence and reduction to practice
`presented in the Swear Behind Affidavit. However, there are several significant flaws
`in Petitioner’s assessment of the Swear Behind Affidavit that preclude Petitioner from
`meeting the requirements for institution of inter partes review under 37 C.F.R. §
`42.108(c).
`One such flaw relates to the fact that the Parulski ‘159 Patent, Parulski ‘526
`Patent and the Reele ’037 Patent are all cited in the Swear Behind Affidavit. The
`Parulski ‘526 Patent, which is related to the Parulski ‘159 Patent, is the primary
`reference that Petitioner relies upon in requesting cancellation of the Challenged
`Claims. Because the Parulski ‘159 Patent was specifically cited by the Examiner
`during prosecution of the ‘470 Application, the Examiner necessarily must have
`considered the sufficiency of the Swear Behind Affidavit as it applied to that
`particular reference. As discussed above, the Parulski ‘526 Patent does not include
`any new or different subject matter as compared to the Parulski ‘159 Patent, but,
`indeed,
`includes an
`identical disclosure.
` No new material
`is presented.
`Accordingly, the Swear Behind Affidavit similarly and inherently antedates the
`Parulski ’526 Patent.
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`Another flaw in Petitioner’s assessment of the Swear Behind Affidavit relates
`to the factual information upon which Petitioner relies on to challenge the
`sufficiency of the Swear Behind Affidavit. As an exhibit to the Petition, Petitioner
`includes a copy of a 115-page document, which it has asserted as being “the
`inventor’s affidavit.” (See Exh. 1005 of the Petition). Petitioner claims that it has
`thoroughly reviewed the inventor’s affidavit (See page. 4, line 14 of the Petition)
`and, presumably, Petitioner has taken this 115-page document to be the Swear
`Behind Affidavit. However, after a thorough review of the Patent Owner’s paper
`files, the USPTO paper file wrapper (“PFW”) for the ‘871 Patent and the USPTO
`on-line image file wrapper for the ‘871 Patent, the Patent Owner has confirmed that
`this 115-page document is in fact an image file wrapper (“IFW”) copy of a partial
`portion of the Swear Behind Affidavit (“IFW copy of the Swear Behind Affidavit”)
`and has confirmed that the IFW copy of the Swear Behind Affidavit omits significant
`and key evidence that was considered by the Examiner of the E-Watch ’470
`Application as part of the Swear Behind Affidavit.
`The evidence omitted from the IFW copy of the Swear Behind Affidavit (i.e.,
`Exh. 1004 of the Petition) is a result of such evidence having been submitted to the
`USPTO, but having been saved as a publicly available artifact as opposed to having
`been scanned as part of the IFW copy of the Swear Behind Affidavit. However, as
`the USPTO IFW and PFW records show, on the same day the Swear Behind
`Affidavit was filed with the USPTO (i.e., January 6, 2005), the Artifact Sheet [EXH.
`2006] was entered in the IFW and PFW of the E-Watch ‘470 Application indicating
`that an item was filed but was not scanned. The Artifact Sheet has an entry indicating
`that seventeen (17) exhibits were received but not scanned (i.e., the Unscanned
`Artifacts). A copy of the Unscanned Artifacts, which are missing portions of the
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`Exhibits of the IFW copy of the Swear Behind Affidavit, is provided herewith as
`Exhibit 7 [EXH. 2007].
`Because Petitioner has not considered all of the evidence in the Swear Behind
`Affidavit presented to the Examiner during prosecution of the E-Watch ‘470
`Application and included in the PFW copy of the Swear Behind Affidavit, the
`assertions of Petitioner with respect to the sufficiency of the Swear Behind Affidavit
`are necessarily inaccurate and incomplete and should be rejected.
`Petitioner’s assessment of the Swear Behind Affidavit is also fundamentally
`flawed because Petitioner improperly analyzes the critical conception and diligence
`dates. Petitioner implies that the relevant date with respect to conception is a fixed
`date irrespective of the effective dates of the relied upon patents. For example,
`Petitioner repeatedly discusses the date of conception being March of 1993 and
`corresponding diligence being required from March of 1993 to the filing date of
`United States patent application number 09/006,073 (“E-Watch ‘073 Application) to
`which the ‘E-Watch ‘470 Application claims priority.
`Pursuant to 37 C.F.R. §1.131(b), the showing of facts for an oath or
`declaration under paragraph (a) of this section shall be such, in character and
`weight, as to establish reduction to practice prior to the effective date of the
`reference, or conception of the invention prior to the effective date of the reference
`coupled with due diligence from prior to said date to a subsequent reduction to
`practice or to the filing of the application. Petitioner has not shown any defects in
`the Swear Behind Affidavit for the entire period between March of 1993 to the filing
`date of the E-Watch ‘073 Application (January 12, 1998), and it certainly has not
`and cannot in good faith claim that the Swear Behind Affidavit is insufficient to
`antedate at least one of the two cited references which have effective dates of April
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`24, 1995 (Parulski ‘526 Patent) and December 9, 1994 (Reele ’037 Patent). In view
`of Petitioner’s errant focus on an absolute conception date without any consideration
`of the effective dates of the relied upon patents, the assertions of Petitioner with
`respect to the sufficiency of the Swear Behind Affidavit are without merit.
`Because Petitioner has not considered the complete Swear Behind Affidavit
`presented to the Examiner of the E-Watch ‘470 Application and has not applied the
`appropriate analysis with respect to the relevant dates required to antedate the prior
`art cited in the Petition, Petitioner has failed to meet the requirements of 37 C.F.R.
`§42.108(c) for the Board to grant institution of inter partes review of the ‘871
`Patent.
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`III. CONCLUSION
`While substantive distinctions exist between the claims of the E-Watch ‘871
`Patent and the asserted patents, it is unnecessary to analyze those distinctions because
`Petitioner has not even met the minimum requirements set forth in 35 U.S.C. §314 for
`institution of inter partes review. With respect to 37 C.F.R §42.108(c), Petitioner has
`not met its burden to show a reasonable likelihood that at least one of the claims
`challenged in the Petition is unpatentable because it has failed to establish that the
`previously filed Swear Behind Affidavit is insufficient to antedate the references cited
`in the subject IPR case. This is particularly true in view of the fact that Petitioner did
`not review any of the Unscanned Artifacts contained in the Swear Behind Affidavit.
`Accordingly, for the reasons presented herein, inter partes review of the E-Watch ‘871
`Patent should not be instituted, and the Petition should be dismissed in its entirety.
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`Respectfully Submitted,
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`/David O. Simmons/
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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
`
`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
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`IRON DOME LLC
`Petitioner
`v.
`E-WATCH, INC.
`Patent Owner
`___________________________________
`Case: IPR2014-00439
`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
`revised Patent Owner’s Preliminary Response, certifying that a copy of the revised
`Patent Owner’s Preliminary Response in its entirety has been served on Petitioner as
`detailed below.
`July 28, 2014
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`Date of Service:
` Manner of Service: email with consent of Petitioner
` Document(s) Served: Revised Patent Owner’s Preliminary Response
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` Exhibits [EXH. 2001] to [EXH. 2007]
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`Person(s) Served: Steven Yu
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` RozMed LLC
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` P. O. Box 10034
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` Gaithersburg, MD 20898
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`/David O. Simmons/
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`Reg. No. 43,124
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