Case No. 2015-01039
`U.S. Patent 7,003,357
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LINDSAY CORPORATION
`Petitioner,
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`v.
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`VALMONT INDUSTRIES, INC.
`Patent Owner
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`Case IPR2015-01039
`Patent 7,003,357
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`PATENT OWNER VALMONT INDUSTRIES, INC.’S
`RESPONSE TO PETITION
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`TABLE OF CONTENTS
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` 
`I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`CLAIM CONSTRUCTION ............................................................................ 2 
`A. 
`“hand-held” ........................................................................................... 2 
`III.  THE ’357 PATENT ......................................................................................... 6 
`IV.  THE PRIOR ART ............................................................................................ 7 
`A. 
`Scott ....................................................................................................... 7 
`B. 
`Pyotsia ................................................................................................... 8 
`C. 
`AIMS ................................................................................................... 10 
`D.  Abts ...................................................................................................... 12 
`V.  ARGUMENTS .............................................................................................. 12 
`A.  Ground 2 (Scott, Pyotsia, and AIMS) ................................................. 16 
`1. 
`Petitioner has not shown that the Prior Art
`Discloses Claim 3 or Claim 6 ................................................... 16 
`A Person of Ordinary Skill in the Art would not
`have Combined Scott, Pyotsia, and AIMS ............................... 23 
`Petitioner Provides No Actual Evidence for its
`Obviousness Assertions Regarding Claim 17 ........................... 34 
`Petitioner is not permitted to cure these defects in a
`reply brief .................................................................................. 36 
`Ground 4 (Scott, Pyotsia, and Abts) .................................................... 37 
`1. 
`The Prior Art does not Disclose Claim 11’s
`changing operating irrigation patterns’ shape
`limitation ................................................................................... 37 
`A Person of Ordinary Skill in the Art would not
`have Combined Scott, Pyotsia, and Abts .................................. 40 
`Petitioner should not be permitted to cure these
`defects in a reply brief ............................................................... 43 
`VI.  CONCLUSION .............................................................................................. 45 
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`2. 
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`3. 
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`4. 
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`B. 
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`2. 
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`3. 
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`EXHIBIT LIST
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`Exhibit
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`Description
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`VALMONT 2001 eBay Enterprise, Inc. and eBay, Inc. v. Lockwood, No.
`CBM2014-00026 (PTAB 2014), Institution Decision
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`VALMONT 2002 Kinetic Technologies, Inc. v. Skyworks, Solutions, Inc., No.
`IPR2014-00529 (PTAB 2014), Decision Denying Institution
`of Inter Partes Review
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`VALMONT 2003 LG Display Co., Ltd. v. Acacia Research Corp., No.
`IPR2014-01094 (PTAB 2014), Decision Denying Institution
`of Inter Partes Review
`
`VALMONT 2004 Merriam-Webster’s Collegiate Dictionary, Tenth Addition
`(2001) (excerpts)
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`VALMONT 2005 Random House Webster’s Unabridged Dictionary, Second
`Edition (2001) (excerpts)
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`VALMONT 2006 Professor Melvin Ray Mercer’s Declaration
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`VALMONT 2007 Deposition Transcript of Dr. Rosenberg
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`VALMONT 2008 OneStat Website Statistics and website metrics Press
`Room (July 24, 2002)
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`VALMONT 2009 Kyocera QCP 6035 Specs (Feb. 29, 2008)
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`VALMONT 2010 Laptop Vs. PDA, eHow article, by David Sandoval
`VALMONT 2011 HP iPAQ 2210/2215 Pocket PC 2003 PDA, Mobile Tech
`Review by Lisa Gade (June 19, 2003)
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`VALMONT 2012 Apple iBook G3/600 14-inch (Early 2002) review
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`VALMONT 2013 Zimmatic by Lindsay, Articles list
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`VALMONT 2014 Brown, PCMag re Sprint PCS TP3000 (February 6, 2001)
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`VALMONT 2015 Evolution of Cell Phones, Web Designer Depot (May 22,
`2009)
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`VALMONT 2016 Professor Melvin Ray Mercer’s CV
`VALMONT 2017 List of reviewed materials for Professor Melvin Ray
`Mercer’s Declaration
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`VALMONT 2018 Professor Melvin Ray Mercer’s claim chart for claim 1
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Genzyme Corp. v. Transkaryotic Therapies, Inc.,
`346 F.3d 1094, 1098 (Fed. Cir. 2003) .................................................. 4
`
`InTouch Techs, Inc. v. VGO Comms., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................... 29
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398, 417-418 (2007) .......................................... 13, 14, 31, 32
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`PAR Pharm., Inc. v. TWi Pharms., Inc.,
`773 F.3d 1186, 1193 (Fed. Cir. 2014) ................................................ 14
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`Tex. Digital Sys., Inc. v. Telegenix, Inc.,
`308 F.3d 1193, 1202–03 (Fed. Cir. 2002) ............................................ 4
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`
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`OTHER AUTHORITIES
`CBS Interactive Inc. v. Helferich Pat. Lic., LLC,
`IPR2013-00033, Paper No. 79 (Order) (Aug. 9, 2013) ......... 36, 37, 44
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`Conopco, Inc. DBA Unilever,
`IPR2013-00510, Paper 9 (Institution Decision) (P.T.A.B.
`Feb. 12, 2014) ..................................................................................... 30
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`Edmund Optics, Inc. v. Semrock, Inc.,
`IPR2014-00583, Paper 50 (final written decision)
`(P.T.A.B. Sept. 9, 2015) ..................................................................... 24
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`Endo Pharm. Inc. v. Depomed, Inc.,
`IPR2014-00654, Paper 69 (P.T.A.B. Sept. 21, 2015) ...... 13, 14, 31, 32
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`Ex parte Levengood,
`28 USPQ2d 1300, at *1-3 (BPAI 1993) ....................................... 18, 19
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`General Electric v. Tas Energy,
`IPR2014-00163, 2014 WL 1994554 (P.T.A.B. May 13,
`2014) ............................................................................................. 17, 18
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`IBM v. Intellectual Ventures II LLC,
`IPR2014-00180, Paper 50 (P.T.A.B. Apr. 3, 2015) ..................... 28, 29
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`LG Display Co., Ltd. v. Acacia Research Corp.,
`IPR2014-01094, Paper 10 (P.T.A.B. Jan. 13, 2015) ...................... 5, 22
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`Qualtrics, LLC v. OpinionLab, Inc.,
`IPR2014-00366, Paper 45 at 4-5 (P.T.A.B. July 30, 2015) ................ 13
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`
`
`RULES
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`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) .......................... 36, 37, 44
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`STATUTES
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`37 C.F.R. § 42.6(a)(3) ................................................................................... 30
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`37 C.F.R § 42.23(b) .......................................................................... 22, 36, 44
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`37 C.F.R § 42.65 ................................................................................. 5, 24, 42
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`37 C.F.R. § 42.104 (b)(5) ............................................................................ 227
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`35 U.S.C. § 316(e) ........................................................................................ 13
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`v
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`I.
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`INTRODUCTION
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`The Board instituted with respect to claims 1-15 and 17-18 of U.S. Patent
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`No. 7,003,357 (the “’357 patent”) owned by Valmont Industries, Inc. (“Valmont”
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`or “Patent Owner”) on Ground 2 (claims 1-3, 6-14, 17 and 18 obvious under Scott,
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`Pyotsia, and AIMS) and Ground 4 (claims 4, 5, 11 and 15 obvious under Scott,
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`Pyotsia, and Abts), raised by Lindsay Corporation ( “Lindsay” or “Petitioner”) in
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`its Petition for Inter Partes Review. (Paper 1 at 3.) A more complete review of
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`the evidence will establish that these claims are patentable over the cited grounds
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`for the reasons set forth herein.
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`The Petition and its supporting declaration fail to establish a prima facie
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`case of obviousness because a person of ordinary skill in the art at the time of the
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`invention would not have combined Scott with the secondary prior art references in
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`the way Petitioner proposes. No motivation to combine the prior art as suggested
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`existed because the proposed combinations would eradicate Scott’s structure and
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`purpose, resulting in an inoperable device. There is no indication that Petitioner,
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`or its expert Dr. Rosenberg, considered the references’ actual teachings in alleging
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`that a person of ordinary skill would be motivated to combine them. Instead,
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`Petitioner generally makes conclusory statements purportedly justifying
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`motivation. But neither Petitioner nor Dr. Rosenberg make any attempt—outside
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`of conclusory assertions—to show that a person of ordinary skill in the art would
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`have had a reasonable expectation of success in combining the art. Because
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`Petitioner’s proposed combinations are solely based on hindsight and lack
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`meaningful analysis or explanation, the Board should deny Grounds 2 and 4.
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`Notwithstanding the aforementioned deficiencies, Petitioner provides no
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`actual evidence for its obviousness assertions as to claim 17 under Ground 2.
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`Further, Petitioner fails to show that the prior art discloses claims 3 or 6 under
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`Ground 2. Finally, the prior art cited for Ground 4, alone or in combination, lacks
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`claim 11’s “changing operating irrigation patterns’ shape” limitation. Thus even if
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`Scott and the secondary references could be properly combined in the way that
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`Petitioner suggests under Ground 4, the resulting combination would lack this
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`claimed limitation.
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`For the foregoing reasons, as further set forth herein, the Board should deny
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`Grounds 2 and 4 as failing to establish a prima facie case of obviousness.
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`II. CLAIM CONSTRUCTION
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`A.
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`“hand-held”
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`Petitioner and Patent Owner dispute the proper construction of “hand-held”
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`as used in the phrases “hand-held display” and “hand-held RUI.” (Paper 1 at 6;
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`Paper 6 at 6-10.) In its Institution Decision, the Board did not construe “hand-
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`held” (Paper 7 at 4-6), determining “[o]n this record,” i.e., the current record, that
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`this term did not require express construction. (Id. at 4.) For the reasons below,
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`U.S. Patent 7,003,357
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`Patent Owner respectfully requests that the Board does need to construe the term
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`“hand-held” to reach its Final Written Decision, as certain of Patent Owner’s
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`substantive arguments are based on the premise that a laptop computer is not a
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`“hand-held” display/RUI.”
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`Petitioner’s Construction
`“any device, having a display screen,
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`Patent Owner’s Construction
`“personal digital assistant, cell phone,
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`that can be used while held in the
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`smart phone, or similar device of a
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`hands…include[ing]…[a] laptop
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`compact size, including a display and
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`computer…” (Paper 1 at 6, citing Ex.
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`designed to be operated while being
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`1009 ¶¶ 13, 14, 43, and 46.)
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`held in a user’s hand” (Paper 6 at 7.)
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`Petitioner’s proposed construction is not the broadest reasonable
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`interpretation, is not supported by intrinsic or extrinsic evidence, and unreasonably
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`reads out the concept of “hand-held.” First, in support of its construction,
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`Petitioner cites only the following intrinsic evidence: that a hand-held display/RUI
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`can be “a personal digital assistant (PDA) or similar portable hand-held computer
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`of compact size.” (Paper 1 at 6, citing Ex. 1001 at 3:35-38.) Petitioner cites no
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`support, however, for its conclusion that a laptop computer is “a similar portable
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`hand-held computer of compact size.” (Id.) Indeed, there is no intrinsic support
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`for Petitioner’s proposed construction, as a laptop computer, while designed to be
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`portable, is neither similar in size to a PDA nor designed to be “hand-held.” In
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`fact, there is no reference to laptop computers in ’357 patent’s specification.
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`Second, the extrinsic evidence to which Petitioner cites is legally
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`insufficient, as Petitioner cites only to a 2015 dictionary definition (Paper 1 at 6,
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`citing Ex. 1010) which post-dates the relevant 2002 time frame by more than ten
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`years. See Genzyme Corp. v. Transkaryotic Therapies, Inc., 346 F.3d 1094, 1098
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`(Fed. Cir. 2003) (“In ascertaining the accustomed usage of the relevant community
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`at the relevant time, dictionaries and treatises may serve to inform the courts.”)
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`(emphasis added); see also Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193,
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`1202–03 (Fed. Cir. 2002).
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`Third, Dr. Rosenberg does not cure Petitioner’s defective construction; he
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`merely repeats it. Specifically, Dr. Rosenberg states that he read Petitioner’s
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`proposed construction and agrees with it. (Ex. 1009 ¶ 43.) But as to how “hand-
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`held” device/RUI should be construed (id. ¶ 46), Dr. Rosenberg simply agrees that
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`Petitioner’s proposed construction—based entirely on an improper dictionary
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`definition as explained above— is correct. (Id.) Indeed, Dr. Rosenberg cites to the
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`same improper dictionary definition, stating he found nothing to contradict this
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`2015 definition. (Id.) The two other paragraphs of Dr. Rosenberg’s declaration on
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`which Petitioner relies likewise fail to offer any support for why hand-held
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`device/RUI as used in 2002 in the ’357 patent includes a laptop. (See id. ¶¶ 13-14
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`(discussing Dr. Rosenberg’s companies and/or technologies).) None of Dr.
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`Rosenberg’s testimony on which the Petitioner relies provides support for the
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`conclusion that one of ordinary skill in the art at the relevant time period would
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`have a reasonable basis to believe that a “hand-held display” includes a laptop, and
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`thus it should be given no weight. See, e.g., LG Display Co., Ltd. v. Acacia
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`Research Corp., No. IPR2014-01094, Paper 10 (P.T.A.B. Jan. 13, 2015) (rejecting
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`expert’s conclusory statement that a person of ordinary skill in the art would
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`understand that the prior art reference disclosed the same configuration required by
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`the claim); see also 37 C.F.R § 42.65(a) (“Expert testimony that does not disclose
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`the underlying facts or data on which the opinion is based is entitled to little or no
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`weight.”).
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`In fact, a person of ordinary skill in the art at the time of the invention would
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`have understood a “hand-held” display/RUI as used in the ’357 patent not to
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`include laptops, but rather to be limited to a display/RUI that a user can operate
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`while being held in the user’s hand. This is the heart of hand-held as described in
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`the ’357 patent, which promotes the convenience of using small, hand-held devices
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`as of 2002. (Ex. 1001 at 3:36-38 and Ex. 2006 at ¶¶ 26-29, 36-37.) Indeed, Dr.
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`Rosenberg testified to this very understanding, agreeing that a user would have to
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`be able to operate the device while holding it. (Ex. 2007 at 104:25-105:2 (“I think
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`there’s an implication, if not explicitly stated, in Claim 1 that [the device is]
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`handheld and operatable.” (emphasis added)).) While laptops are portable, they
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`are not operable (in any manner described in the ’357 patent) while being held in a
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`user’s hand, as the very name—laptop—connotes. In other words, a laptop was
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`and is understood to be a portable personal computer substitute with sufficient
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`processing to permit functionalities beyond those of a PDA. (Ex. 2006 ¶¶ 30-37.)
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`This is especially true of laptops in 2002, which, while portable, were larger and
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`bulkier than modern laptops. (Id.) This construction is further consistent with the
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`2001 publication of the Merriam-Webster dictionary. (Ex. 2004 at 3 (“held in the
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`hand; esp : designed to be operated while being held in the hand”).) Petitioner’s
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`contrary conclusion does not account for these actual teachings of the ’357 patent
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`at the time of the invention, but rather appears to be motivated by hindsight.
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`III. THE ’357 PATENT
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`The ’357 patent, entitled “Method and Means for Reading the Status of and
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`Controlling Irrigation Components,” issued on February 21, 2006. The ’357 patent
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`is generally directed to a hand-held RUI used to control irrigation equipment
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`traditionally used to apply water to land, such as sprinklers.
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`The ’357 patent’s inventors generally disclose convenience as an aim of the
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`invention. According to the inventors, the prior art, while permitting limited-
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`remote control capabilities, did not truly permit a user to control irrigation
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`requirement from any location, but rather tied the user to a physical location. (Ex.
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`1001 at 1:24-45.) The invention requires a hand-held RUI with wireless telemetry
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`such that a user can control the irrigation equipment irrespective of physical
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`location. (Id. at, e.g., 2:10-14.) The invention also contemplates conveniently
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`shaped GUIs for ease of control. (Id. at 3:47-5:37; Ex. 2006 ¶ 38-39.)
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`IV. THE PRIOR ART
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`A.
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`Scott
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`Scott, entitled “Irrigation and Water Resource Management System,” bears a
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`publication date of August 12, 1999, and relates to a computer-based system for
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`controlling irrigation equipment (e.g., sprinklers) and water resource elements
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`(e.g., equipment used to monitor and control the level of lakes or other reservoirs)
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`on golf courses. In fact, Scott—a detailed reference—explicitly differentiates
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`between “irrigation system elements” on the one hand, and “water resource
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`elements” on the other. (Ex. 1004 at, e.g., Abstract, compare 3:11-25 with 5:9-16,
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`7:35-8:1, 8:18-23, 10:29-30, 13:21-22, 20:19-21, compare generally 27:9-32:28
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`(describing “Operation – Irrigation Application” with 32:30-42:36 (describing
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`“Operation – Water Resource Management”), Fig. 1 (elements 12 & 13).)
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`Scott discloses controlling irrigation system elements and water resource
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`elements via GUI using site maps. Site maps are CAD drawings (preferably
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`rendered via AUTOCAD) or video images of a particular golf courses rendered
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`prior to use of the site map by a user. (Ex. 1004 at 6:6-27.) Site maps include the
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`course’s irrigation and water resource equipment, as well as colors or shading of
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`various features and/or icons (e.g., tee areas, greens, roads). (Id. at 25:18-23.)
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`During use of the site map, users can control a course’s irrigation equipment via
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`GUIs, such as enabling or disabling a sprinkler head by checking boxes
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`corresponding to course location or adjusting a sprinkler head’s application
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`parameters by clicking on a depicted sprinkler head and altering its setting. (Ex.
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`1004 at 25:7-23 and 28:16-24.) A user can likewise control a course’s water
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`resource management equipment via GUIs, such as turning a pump on or off by
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`clicking on a depicted pump and selecting “on” or “off.” (Id. at 38:1-19, Figs. 27-
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`28; Ex. 2006 ¶ 40-44.)
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`Scott discloses a system utilizing and displaying GUIs on either a laptop or a
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`desktop with “computer hardware [that is] sufficiently capable” to facilitate both
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`Scott’s disclosed memory- and processing-intensive functionality and GUI
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`interactivity. (Id. at 6:2-5, 14:21-22.) The computer “issu[es] the appropriate
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`commands” “encoded in any suitable digital or analog format known in the art and
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`transmitted by [the] communications interface [] by wires or by radio link to [the]
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`valve controller [].” (Id. at 11:35-12:3.)
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`B.
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`Pyotsia
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`Pyotsia, entitled “Wireless control of a field device in an industrial process,”
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`issued March 7, 2006, based on a U.S. filing date of April 14, 2000. Pyotsia
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`discloses a mobile terminal for communicating over a cellular communication
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`system featuring an interactive user interface that can be used to control, configure,
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`or monitor a plurality of field devices in an industrial process. (Ex. 1007 at, e.g.,
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`Abstract, 3:10-24, Figs. 2, 3, & 6.) The mobile terminal is a hand-held device.
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`The cellular communication system is not GSM/2G (id. at 2:39-41, 2:54-56), but
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`rather preferably relies on the use of web pages rendered by a micro-browser on
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`the cell phone using HTML delivered over a WWW server through Wireless
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`Access Protocol (“WAP”).1 (Id. at 6:42-7:40.) The hand-held device
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`communicates with a mobile terminal using a control room work station or device
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`database as an intermediary, which intermediary “contains all necessary data and
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`instructions sets for controlling, configuring, reading, etc., the field devices.” (Id.
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`at 5:51-53.) The data can be displayed on the WWW pages in any unspecified text
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`or graphical format. (Id. at 7:50-54.)
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`1 While Pyotsia states that it is not limited to the internet/intranet environment and
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`may use various network access methods (Ex. 1007 at 9:14-25), all embodiments
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`rely on the device database 22 for collecting and updating the data from the field
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`devices. (Ex. 1007 at 9:30-34.)
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`The system and graphical functionality disclosed in Pyotsia—a hand-held
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`device as of 2000—is less complex and has far less memory and processing
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`capability than Scott. (Ex. 2006 ¶¶ 45-48, 59-67.)
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`C. AIMS
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`AIMS, entitled “Pivot Network On-Line at T-16 Ranch System for
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`controlling and monitoring agricultural field equipment and method,” appears to
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`bear a publication date of Spring 1996 in “Irrigation Advances” magazine, a
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`publication created by Petitioner and used to promote its Zimmatic irrigation
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`products. AIMS discloses the Zimmatic “Automated Irrigation Management
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`System” Telemetry Network for controlling center pivot irrigation equipment.
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`Users of the AIMS software disclosed in the reference can control irrigation
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`equipment via a desktop computer. (Ex. 1012 at 4.) While the article states that the
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`production manager at the particular Washington ranch discussed in the article was
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`attempting to adapt his laptop computer to use the AIMS software to login and
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`monitor the system via cellular phone (id. at 4), the reference provides no
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`information as to the “attempt,” including whether it was successful or how it
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`operated, which was unlikely given laptop capabilities in 2002. (Ex. 2006 ¶ 52.)
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`Furthermore, the reference does not state that the user was attempting to control
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`the network, only monitor it, and does not state that the cellular phone included a
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`display. (Ex. 1012 at 4; Ex. 2006 ¶ 49-54.) This lack of a display on the
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`referenced cellular phone is due to a lack of displays on cellular phones in 1996.
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`In fact, the reference’s last page—a separate, single page advertisement for
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`another of Lindsay’s Zimmatic brand products, the Zimmatic R-MAC—discusses
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`use of a “touch-tone phone or business band radio” to monitor and control pivot
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`irrigation equipment “from your home or pickup.” (Ex. 1012 at 6.) The cellular
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`phone shown on the advertisement does not include a display. (Id.) User input is
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`accomplished through a keypad on such phone or radio without a display screen.
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`(Id.; Ex. 2006 ¶54.)
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`The AIMS desktop computer communicates with the pivot irrigation
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`equipment via “data transmitting radio connections” in response to mouse point-
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`and-click commands from the user. (Ex. 1012 at 4.) The AIMS software creates a
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`“computer-generated image of the AIMS panel” that is physically attached to the
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`irrigation equipment in the field to allow a user to “monitor, program and control
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`pivot operations.” (Id. at 5.) Users do so by making selections on the computer-
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`generated image of the AIMS panel that shows the “status of the entire system at a
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`single glance” using “color-coded circles on the computer screen,” which circles
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`(having various color and pattern schemes indicating status) represent pivot
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`rotation. (Id. at 5 and Ex. 2006 ¶¶ 50-53.)
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`Like Scott, AIMS’s software is memory- and processing-intensive, and
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`therefore would have required sufficient hardware to facilitate the disclosed
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`functionality.
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`D. Abts
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`Abts, entitled “System for controlling and monitoring agricultural field
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`equipment and method,” issued on January 8, 2002, based on an application filing
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`date of October 14, 1997. Abts discloses a pager system for monitoring
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`agricultural field equipment, which receives status signals when equipment sensors
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`detect a status change. The pager system includes irrigation equipment sensors, an
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`intermediary central computer, and a hand-held pager device. (Ex. 1008 at
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`Abstract; 5:25-6:27.) Radio signals send information from/to the irrigation sensors
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`to the central computer, where data is analyzed. (Id. at 7:15-51.) Then a pager
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`signal transmits data from/to the central computer to the pager. (Id.)
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`Like Pyotsia, the system and graphical functionality disclosed in Abts—a
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`pager device as of 1997—is less complex and has far less memory and processing
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`capability than Scott. (Ex. 2006 ¶¶ 55-57, 76-78.)
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`V. ARGUMENTS
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`The instituted grounds are defective because a person of ordinary skill in the
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`art at the time of the invention would not have been motivated to combine the
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`references as proposed. Further, as to Ground 2, Petitioner provides no actual
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`evidence for its obviousness assertions as to claim 17. Additionally, as to Ground
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`2, Petitioner fails to show that the prior art discloses claims 3 or 6. Finally, as to
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`Ground 4, neither Scott alone nor in combination with the secondary references
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`discloses claim 11.
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`The Board cannot invalidate a claim unless unpatentability is shown “by a
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`preponderance of the evidence.” 35 U.S.C. § 316(e). Petitioners bear the burden
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`of showing that this statutory threshold has been met. Id. This is a higher
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`threshold than that applied at institution. See, e.g., Qualtrics, LLC v. OpinionLab,
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`Inc., IPR2014-00366, Paper 45 at 4-5 (P.T.A.B. July 30, 2015) (“Having instituted
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`trial under the ‘reasonable likelihood’ standard of 35 U.S.C. § 314(a), we decide
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`now whether Qualtrics has proven unpatentability of the challenged claims by a
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`‘preponderance of the evidence,’ as required by 35 U.S.C. § 316(e).” (affirming
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`validity)). Thus the same evidence the Board may have found sufficient under the
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`lower “reasonable likelihood” institution standard may be legally insufficient under
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`the stricter “preponderance of the evidence” standard.
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`“[A] patent composed of several elements is not proved obvious merely by
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`demonstrating that each of its elements was, independently, known in the prior
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`art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Rather, Petitioners
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`must “articulate[] reasoning with rational underpinnings to support a motivation to
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`combine the teachings of the prior art.” Endo Pharm. Inc. v. Depomed, Inc.,
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`IPR2014-00654, Paper 69 at 29 (P.T.A.B. Sept. 21, 2015) (affirming validity)
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`(citing KSR, 550 U.S. at 417-18). Moreover, a person of ordinary skill in the art
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`must have had a reasonable expectation of success of doing so. PAR Pharm., Inc.
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`v. TWi Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014) (invalidity judgement
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`vacated and remanded). Petitioners cannot rely on “mere conclusory statements”
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`to satisfy these requirements. KSR, 550 U.S. at 418.
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`Petitioners fail to satisfy these requirements for either Ground 2 or 4.
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`Petitioner extracts computing and networking concepts from the references and
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`filters them through hindsight to argue obviousness, while largely ignoring the
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`references’ actual capabilities and requirements that negate this conclusion.
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`Specifically, Petitioner and its expert, Dr. Rosenberg, provide conclusory
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`assertions to support the argument that a person of ordinary skill in the art would
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`and could combine the references as suggested in Grounds 2 and 4. Neither
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`Petitioner nor its expert provide bases for these allegations that are grounded in the
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`references themselves. Rather, Petitioner relies on statements by Dr. Rosenberg
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`for which he routinely fails to disclose underlying facts or data, entitling these
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`opinions to little or no weight. Indeed, a person of ordinary skill in the art would
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`not have formed the proposed combinations because doing so would eradicate
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`Scott’s structure and purpose, resulting in an inoperable device. Further, as to
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`Ground 2, Petitioner provides no actual evidence for its obviousness assertions as
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`to claim 17 and fails to show that the prior art discloses claims 3 or 6. Finally, as
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`to Ground 4, neither Scott in combination with Pyotsia and/or Abts disclose all
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`elements of claim 11. Thus, Petitioners have failed to show that either ground
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`renders these claims unpatentable by a preponderance of the evidence.
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`For purposes of the present arguments, a person of ordinary skill in the art is
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`a person who had a Bachelor of Science Degree in Electrical Engineering,
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`Computer Engineering, or Computer Science with related work experience. (Ex.
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`2006 ¶¶ 28-29.) Individuals with additional education or additional industrial
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`experience could still be of ordinary skill in the art if that additional aspect
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`compensates for a deficit in one of the other aspects of the requirements stated
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`above. (Id.) A person of ordinary skill in the art would have knowledge of
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`different types communication equipment that could be used for controlling
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`irrigation equipment. Specifically, a person of ordinary skill would know and
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`understand: (1) that a base station control system as discussed in the specification
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`of the ’357 patent refers to a personal computer (“PC”) system at a location distant
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`from the area being irrigated (see Ex. 1001 at 1:26-35); (2) that a remote mount
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`control panel system as discussed in the specification of the ’357 patent refers to a
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`control panel mounted near the area being irrigated and requires connections
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`between the remote mount system and the irrigation equipment (id. at 1:36-45); (3)
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`that PC-based computer software as of the relevant time period could display and
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`manage the operation of computer-controlled irrigation systems of the type used in
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`golf courses, master planned housing developments, cemeteries, parks and the like,
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`and that graphical user interfaces could be used in such display and management
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`(see generally Ex. 1004); (4) the wireless telecommunication methods as of the
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`time of the invention, including a central computer or base station, would allow
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`them to send data or alarms to a distant receiver, like a pager (see Ex. 1008 at 1:57-
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`67, 2:64-3:18); a mobile cellular phone would have a small screen, with low
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`resolution, limited memory and limited display capabilities (see Ex. 1007 at 8:23-
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`29). (Ex. 2006 ¶¶ 28-29.)
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`A. Ground 2 (Scott, Pyotsia, and AIMS)
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`1.
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`Petitioner has not shown that the Prior Art Discloses Claim
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`3 or Claim 6
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`a)
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`Claim 3: Petitioner has not shown that its
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`references disclose a “digital telephone” for the
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`wireless telemetry means
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`Claim 3 provides that the “wireless telemetry means is comprised of a
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`“digital telephone.” Petitioner shows only that Pyotsia discloses technology
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`whereby a cellular phone implements “digital network standards.” (Paper 1 at 32.)
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`According to Petitioner’s expert, Pyotsia discloses a mobile terminal having
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`internet capability using a Wireless Application Protocol (WAP) for wireless
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`devices such as mobile telephones, pagers, and personal digital assistances. (Ex.
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`1009 ¶ 62.) Based exclusively on Pyotsia’s statement that “the specifications
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`extend mobile network technologies (such as digital network standards and internet
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`technologies such as XML, URLs, Scripting and various content formats,” the
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`expert concludes that the “use of digital network standards on such mobile
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`telephone renders obvious “wher