Paper No.
`Filed: July 14, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-01031
`Patent 7,900,229
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,900,229
`
`
`
`
`
`
`Filed: July 14, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-01031
`Patent 7,900,229
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,900,229
`
`
`
`
`
`
`
`Case No. IPR2015-01031
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`PRELIMINARY STATEMENT .......................................................... 1
`
`THE PETITION ATTEMPTS TO RECAST THE REASONS
`FOR ALLOWANCE ............................................................................ 1
`
`III. THE PETITION’S INCOMPLETE GROUNDS ARE
`UNINSTITUTABLE ............................................................................ 3
`
`A.
`
`B.
`
`The Petition’s Obviousness Analysis Never Identifies
`Which Elements of Which References Are Being Relied
`Upon, So It Lacks the Particularity Required by the
`Statute and the Rules .................................................................. 3
`
`The Petition’s Anticipation Analysis Never Explains
`How the References Teach the Claimed Interaction, So It
`Lacks the Particularity Required by the Statute and the
`Rules ........................................................................................... 4
`
`IV. THE PETITION MAKES NO MEANINGFUL DISTINCTION
`BETWEEN THE PROPOSED GROUNDS, SO ONLY ONE
`GROUND SHOULD BE CONSIDERED ........................................... 6
`
`V.
`
`CONCLUSION ..................................................................................... 7
`
`
`
`i
`
`
`
`
`
`
`
`Case No. IPR2015-01031
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ................................................................................... 4
`
`Net MoneyIN, Inc. v. Verisign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ................................................................. 5
`
`In re Wertheim,
`646 F.2d 527 (CCPA 1981) ....................................................................... 6
`
`Statutes
`
`35 U.S.C. § 312 ............................................................................................... 3
`
`Other Authorities
`
`37 C.F.R. 42.1(b) ............................................................................................ 5
`
`37 C.F.R. 42.22(a)(2) ...................................................................................... 3
`
`ii
`
`
`
`
`
`
`
`Case No. IPR2015-01031
`
`I.
`
`PRELIMINARY STATEMENT
`
`The petition asserts that seven different grounds independently render claims
`
`14-16, 19, 21, 24, 26, 28, 30, and 31 of U.S. Patent No. 7,900,229 unpatentable,
`
`but never addresses the differences between each ground. Worse still, the presented
`
`grounds lack any particularity. For example, the anticipation grounds provide
`
`string citations to references but lack an explanation of whether or how the
`
`different citations combine to anticipate the claims. And the obviousness grounds
`
`generally assert that claims are obvious but lack an explanation of which reference
`
`is relied upon to teach which element of the claims. According to the well-
`
`established framework set forth in statute, rules, and the Board’s representative
`
`orders, these deficiencies render Apple’s petition incomplete and the proposed
`
`grounds should be denied.
`
`II. THE PETITION ATTEMPTS TO RECAST THE REASONS FOR
`ALLOWANCE
`
`In framing its proposed grounds, Apple attempts to recast the Board’s prior
`
`review of the patent’s claims as having determined whether the prior art discloses a
`
`common user profile. Pet. 7. That characterization, however, omits the reasons the
`
`Board found the prior art lacking during its last review of the ’229 patent claims.
`
`In its prior consideration of these claims, the Board’s analysis focused on the
`
`interaction between the first user activity and the second user activity, not only a
`
`
`
`1
`
`
`
`common user profile as Apple suggests. The relevant section of the Board’s order
`
`is copied below. Ex. 1002 at 12.
`
`Case No. IPR2015-01031
`
`
`
`
`
`2
`
`
`
`Case No. IPR2015-01031
`
`III. THE PETITION’S INCOMPLETE GROUNDS ARE
`UNINSTITUTABLE
`
`Consistent with 35 U.S.C. § 312, which requires that “the petition identif[y],
`
`in writing and with particularity, each claim challenged, the grounds on which the
`
`challenge to each claim is based, and the evidence that supports the grounds for the
`
`challenge to each claim,” Rule 42.22(a)(2) requires that the petition set forth “[a]
`
`full statement of the reasons for the relief requested, including a detailed
`
`explanation of the significance of the evidence including material facts, and the
`
`governing law, rules, and precedent.” This is a critical component because a patent
`
`owner cannot respond to an argument in a petition without the necessary
`
`explanation for identifying what the argument is. In this case, the incompleteness
`
`of the petition’s grounds renders them uninstitutable and leaves the patent owner
`
`without the ability to fully respond.
`
`A. The Petition’s Obviousness Analysis Never Identifies Which
`Elements of Which References Are Being Relied Upon, So It
`Lacks the Particularity Required by the Statute and the Rules
`
`To provide a complete obviousness analysis, a petition must include an
`
`“explanation of how the teachings of the references would be arranged or
`
`combined or why a person of ordinary skill would have made the combination”
`
`and “some reason why a person of ordinary skill in the art would have thought to
`
`combine particular available elements of knowledge, as evidenced by the prior art,
`
`
`
`3
`
`
`
`Case No. IPR2015-01031
`
`to reach the claimed invention.” IPR2013-00183, Paper 12, at 9 (Jul. 31, 2013)
`
`(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
`
`Each of the obviousness grounds (grounds 2-4, 6, and 7) proposed in
`
`Apple’s petition is incomplete. Because every proposed obviousness ground fails
`
`to explain which portions of the references are being relied upon for which
`
`elements of the claims, they all lack a complete analysis. See Pet. 33-38, 56-60.
`
`Indeed, many grounds in the petition are proposed for all of the challenged claims
`
`yet only discuss elements of some of the dependent claims (grounds 3, 6, and 7).
`
`Id. at 34-36, 56-60. And some grounds (grounds 2 and 6) consist of only a single
`
`paragraph that fails to explain how the references are being combined. Id. at 34-35,
`
`56-57. When, as here, a petition’s analysis of obviousness is “incomplete,” it is
`
`“insufficient to demonstrate a reasonable likelihood of prevailing on [the]
`
`obviousness challenge.” Id. at 10. Thus, each of the obviousness grounds (grounds
`
`2-4, 6, and 7) should be denied.
`
`B.
`
`The Petition’s Anticipation Analysis Never Explains How the
`References Teach the Claimed Interaction, So It Lacks the
`Particularity Required by the Statute and the Rules
`
`Like the obviousness grounds, the anticipation grounds (grounds 1 and 5)
`
`are incomplete and uninstitutatable. Because the petition focuses on a common
`
`profile rather than the claimed interaction between the first user activity and the
`
`second user activity, the petition fails to address this claim feature with
`
`
`
`4
`
`
`
`Case No. IPR2015-01031
`
`particularity. For example, in ground 1, the petition maps more than 30 paragraphs
`
`of the Tomioka reference, spanning multiple, alternative embodiments, as being
`
`relevant to this claim feature without explanation of how those features allegedly
`
`disclose the claimed interaction. Pet. 22-28. This internal redundancy within the
`
`extensive citation to Tomioka is no different than multiple-reference redundancy. It
`
`places a significant burden on the Board and the patent owner to discern what the
`
`petitioner’s intended argument is, frustrating the congressional intent for
`
`proceedings that provide a “just, speedy, and inexpensive resolution.” CBM2012-
`
`00003, Paper 7, at 2-3 (quoting 37 C.F.R. 42.1(b)) (Oct. 25, 2012).
`
`Moreover, this incompleteness and omission of explanation unfairly limits
`
`the patent owner’s ability to form a complete reply. For example, if the petition’s
`
`mapping (or mappings) relies on multiple, distinct teachings (e.g., different
`
`embodiments) of the reference, it fails to anticipate the claims as a matter of law.
`
`Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Without
`
`knowing what the actual mapping or mappings are, the patent owner can only
`
`inform the Board that, to the extent the petition attempts to form a ground from the
`
`many distinct portions of the Tomioka reference, it would be inappropriate to rely
`
`on a mapping that bridges distinct teachings to anticipate the claims.
`
`Ground 5—in addition to pointing to multiple embodiments in the Cristofalo
`
`reference for the claimed interaction without explanation, Pet. 44-52—is
`
`
`
`5
`
`
`
`Case No. IPR2015-01031
`
`incomplete for a second reason. The petition bases this anticipation ground in part
`
`on the issued claims of Cristofalo (Ex. 1006), which issued in 2007, without
`
`showing support for those claims in the original disclosure of the application that
`
`resulted in the Cristofalo patent. Indeed, the claims of the issued patent are
`
`different from the claims in the patent’s pre-grant publication. Ex. 2001. This is
`
`problematic because Ex. 1006 did not issue until 2007, long after the filing date of
`
`the ’229 patent. Ex. 1006, p. 1. Accordingly, those claims are only prior art if they
`
`have support in the original application. See In re Wertheim, 646 F.2d 527, 536
`
`(CCPA 1981) (finding new matter to not be entitled to the original filing date).
`
`Accordingly, the Board should deny each of the proposed grounds because
`
`they lack the particularity required by the statute and rules.
`
`IV. THE PETITION MAKES NO MEANINGFUL DISTINCTION
`BETWEEN THE PROPOSED GROUNDS, SO ONLY ONE GROUND
`SHOULD BE CONSIDERED
`
`As explained in the Board’s representative orders, “multiple grounds, which
`
`are presented in a redundant manner by a petitioner who makes no meaningful
`
`distinction between them, are contrary to the regulatory and statutory mandates,
`
`and therefore are not all entitled to consideration.” CBM2012-00003, Paper 7, at 2.
`
`The petition makes passing reference to this requirement, stating that “[e]ach
`
`invalidity ground is non-cumulative,” Pet. 1, but provides no support for that
`
`conclusory statement. Instead, the petition contradicts its conclusion with regular
`
`
`
`6
`
`
`
`Case No. IPR2015-01031
`
`assertions that the references can be combined because they relate to the same
`
`technologies. See, e.g., Pet. 34 (“the references address common technologies and
`
`common problems within a common field”); see also id. at 36, 57-56. Because the
`
`petition’s simple statement does not meaningfully distinguish between the seven
`
`grounds presented in the petition, if the Board decides to institute anything, it
`
`should not consider any grounds beyond the first ground presented.
`
`V. CONCLUSION
`For the foregoing reasons, OpenTV respectfully requests the Board deny
`
`Apple’s petition for inter partes review. To the extent the Board institutes review,
`
`OpenTV requests that it do so under only the first of Apple’s redundant proposed
`
`Respectfully submitted,
`
` By: /Joshua L. Goldberg/
`Joshua L. Goldberg, Back-up Counsel
`Registration No. 59,369
`
`
`
`Counsel for OpenTV, Inc.
`
`
`
`
`grounds.1
`
`Dated: July 14, 2015
`
`
`
`
`1 If trial is instituted, OpenTV reserves its rights to provide claim constructions and
`
`raise additional arguments as to why Apple has failed to carry its burden and why
`
`the claims should be confirmed.
`
`
`
`7
`
`
`
`Case No. IPR20l5-01031
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Preliminary Response and Exhibit 2001 were served on July 14, 2015 via
`
`FedEx and e—mail directed to counsel of record for the Petitioner at the following:
`
`Mark E. Miller (markmi11er@omm.com)
`Xin—Yi Zhou (Vzhou@omm.com)
`John Kevin Murray (kmurray2@omm.com)
`Anne E. Huffsmith (ahuffsmith@omm.com)
`O’MELVENY & MYERS LLP
`
`Two Embarcadero Center, 28th Floor
`
`San Francisco, CA 9411 1-3823
`
`
`
` %
`:1 Lauren K.
`I Legal Assist
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
