UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS NETWORK
`SERVICES INC., VERIZON SERVICES CORP., TIME WARNER CABLE
`INC., ICONTROL NETWORKS, INC. and COXCOM, LLC
`Petitioners,
`v.
`JOAO CONTROL & MONITORING SYSTEMS, LLC
`Patent Owner
`________________
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`Case IPR2015-01482
`Patent 7,397,363
`________________
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`PRELIMINARY RESPONSE OF PATENT OWNER
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS NETWORK
`SERVICES INC., VERIZON SERVICES CORP., TIME WARNER CABLE
`INC., ICONTROL NETWORKS, INC. and COXCOM, LLC
`Petitioners,
`v.
`JOAO CONTROL & MONITORING SYSTEMS, LLC
`Patent Owner
`________________
`
`Case IPR2015-01482
`Patent 7,397,363
`________________
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`PRELIMINARY RESPONSE OF PATENT OWNER
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`Preliminary Response of Patent Owner
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`TABLE OF CONTENTS
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`Page
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`I. INTRODUCTION ............................................................................................... 1
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`II. BACKGROUND ................................................................................................ 2
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` A. Overview of the ‘363 Patent .......................................................................... 2
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` B. Prosecution History of the ‘363 Patent .......................................................... 5
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` C. Petition Overview .......................................................................................... 6
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`III. THE PETITION SHOULD BE DENIED BECAUSE IT IS BARRED UNDER
` 35 U.S.C. § 315(b) ............................................................................................. 9
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` A. Background .................................................................................................... 9
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` B. The Petition is Time Barred ......................................................................... 11
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` C. Petitioners’ Motion ...................................................................................... 12
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` E. The Petition was Incomplete ........................................................................ 16
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` D. The Petitions Were Not Timely Filed, Fees Were Not Timely Paid and the
` Petitions Were Not Timely Served .............................................................. 12
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` F. Petitioners have Engaged in a Course of Conduct that has Deprived the
` PTAB of Jurisdiction Over This Petition ...................................................... 17
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` G. Petitioners Intentionally Delayed Completing the Filing of the Petition Until
` June 24, 2015 ................................................................................................ 17
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` H. Petitioners’ Expert Declaration was not Timely Served .............................. 18
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` I. Petitioners’ Counsel have Breached Their Duties of Candor
` and Good Faith ............................................................................................. 19
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` J. The Board’s Prior Decisions are Distinguishable ......................................... 22
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`IV. CLAIM CONSTRUCTION ............................................................................ 23
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` A. Legal Standards ............................................................................................ 23
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` B. “first signal,” “second signal” and “third signal” ........................................ 25
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` C. “automatically received” .............................................................................. 26
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` D. “at least one of activate, de-activate, disable, re-enable and control” ......... 26
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` E. “communication device” .............................................................................. 26
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`V. RESPONSE TO PROPOSED GROUNDS OF INVALIDITY ........................ 27
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` A. The Proposed Grounds Fail to Meet the Burden of Showing a Reasonable
` Likelihood of Prevailing .............................................................................. 27
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` B. Ground 1 ...................................................................................................... 28
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` 1. French fails to teach a first processing device located at the premises ... 28
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` C. Ground 2 ...................................................................................................... 30
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`VI. CONCLUSION ............................................................................................... 31
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`LIST OF EXHIBITS
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`Case IPR2015-01482
`Patent 7,397,363
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`Description
`Exhibit
`EX2001 Declaration of René A. Vazquez
`Proof of Service indicating that Verizon Communications, Inc. was
`served with a Complaint alleging infringement of the ’363 Patent on
`June 23, 2104 in the matter of JCMS v. Terremark North America
`LLC, C.A. No. 14-525-GMS (D. Del.)
`EX2003 Terremark’s Rule 7.1 Disclosure Statement in the matter of JCMS v.
`Terremark North America LLC, C.A. No. 14-525-GMS (D. Del.)
`Substitution of Terremark North America LLC in place of Verizon
`Communications Inc. in the matter of JCMS v. Terremark North
`America LLC, C.A. No. 14-525-GMS (D. Del.)
`Proof of Service indicating that Time Warner Inc. was served with a
`Complaint alleging infringement of the ’363 Patent on June 23, 2104
`in the matter of JCMS v. Time Warner Cable, Inc., C.A. No. 14-524-
`GMS (D. Del.)
`USPS Tracking data for package containing service copies of
`IPR2015-01482, -01485 and -01486, indicating shipment on June 24,
`2105
`FedEx Tracking data for package containing service copies of
`IPR2015-01466, -01477, -01478 and -01484, indicating shipment on
`June 24, 2105
`EX2008 Email dated July 17, 2015 from Patent Owner’s counsel R. Vazquez to
`Petitioners’ counsel C. Holloway
`EX2009 Email dated July 29, 2015 from Petitioners’ counsel C. Holloway to
`Patent Owner’s counsel R. Vazquez
`EX2010 Email dated July 31, 2015 from Petitioners’ counsel C. Holloway to
`Patent Owner’s counsel R. Vazquez
`EX2011 U.S. Patent No. 6,204,760 to Brunius
`“Supplement to the Remarks for the Amendment filed on October 24,
`2007” filed on November 23, 2007 during prosecution of the patent
`application that issued as related U.S. Patent No. 7,397,363
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`EX2012
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`EX2002
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`EX2004
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`EX2005
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`EX2006
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`EX2007
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`I.
`INTRODUCTION
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`Patent Owner Joao Control & Monitoring Systems, LLC (“JCMS”)
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`respectfully submits this Preliminary Response of Patent Owner (“Preliminary
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`Response”) in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107. This
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`Preliminary Response responds to the Petition for Inter Partes Review (“Petition”)
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`filed by Petitioners regarding claims 42-46, 48, 53, 54 and 84-86 (“Challenged
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`Claims”) of U.S. Patent No. 7,397,363 (“the ‘363 patent”).
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`This Preliminary Response is timely filed under 35 U.S.C. § 313 and 37
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`C.F.R. § 42.107, as it is filed within three months of the July 7, 2015 date of the
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`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response (Paper No. 3).
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`JCMS requests that the Board not institute an inter partes review (“IPR”)
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`because Petitioners have failed to demonstrate a reasonable likelihood of
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`prevailing with respect to any of the Challenged Claims, thereby failing to meet the
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`threshold for institution under 35 U.S.C. § 314(a).
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`The two proposed grounds of rejection are substantively and procedurally
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`flawed, as will be explained below. Further, none of the cited references teach
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`important properly construed claim limitations.
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`In the end, the Petition is materially deficient and fails to set forth sufficient
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`evidence that Petitioners have a reasonable likelihood of prevailing with respect to
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`any of the Challenged Claims, as required under 35 U.S.C. § 314(a). JCMS
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`respectfully submits that the Board should conserve resources by declining to
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`institute this meritless proceeding.
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`II. BACKGROUND
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`A. Overview of the ‘363 Patent
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`The ‘363 patent is directed at a novel and unconventional system for, inter
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`alia, remotely-controlling and/or monitoring systems located at vehicles and
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`premises. EX1001 at 1:23-30. The Challenged Claims are directed to a specially
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`assembled and programmed apparatus for detecting a state of disrepair of a
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`premises system and/or device from a remote location.
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`At the time of the claimed invention, existing premises monitoring, control
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`and/or security systems shared a similar and conventional architecture. Namely,
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`such systems generally utilized various sensors located at the premises (e.g., door
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`sensors, window sensors, motion sensors) and a main controller located at the
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`premises that receives signals from the various sensors.
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`For example, U.S. Patent No. 6,204,760 to Brunius (“Brunius”) discloses a
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`security system for a building complex that is representative of the conventional
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`systems that existed at the time of the claimed invention. EX2011. Brunius
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`describes a typical security system existing at the time as follows:
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`“In a
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`typical security system, a main controller
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`communicates with sensors positioned throughout a
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`surveillance area, such as a home or business, to monitor
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`various security conditions . . . [t]he control panel is
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`typically placed in a remote location in the surveillance
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`area such as in a basement or utility closet . . . [t]he
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`sensors placed throughout the surveillance area may
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`include door/window sensors, passive infrared sensors
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`for motion, temperature sensors, and the like . . . [w]hen
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`a change in condition is sensed, the transmitter associated
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`with a sensor transmits a sensor signal . . . to the main
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`controller. When the resident opens a door that is
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`monitored by a door/window sensor, the sensor transmits
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`a sensor signal to the main controller indicating that the
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`door has been opened . . . [i]f the security system is not
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`disarmed within the entry delay, e.g., thirty seconds, the
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`main controller . . . may sound an alarm. Also, the main
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`controller may be tied to a telephone system for the
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`purpose of notifying a security agency or police of the
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`alarm condition.” (emphasis added). EX2011 at 1:15-36.
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`Thus, conventional security systems at the time of the claimed invention
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`would utilize sensors located at the premises (the surveillance area in Brunius) that
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`sends sensor signals to a main controller which, although located remote from the
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`sensors, is still located at the premises (the examples given in Brunius are a
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`basement or utility closet). Further, the main controller could, optionally, send a
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`notification signal to a security agency or police in response to an alarm condition.
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`One capability missing from conventional systems existing at the time of the
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`claimed invention is the ability of an owner or occupant of the premises, as
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`opposed to a monitoring entity such as a security agency or police, to remotely
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`control the premises security system or monitor conditions at the premises. Indeed,
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`this is one of the problems addressed by the ‘363 patent, which utilizes a unique
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`and unconventional system made up of special purpose devices that enable owners
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`or occupants of vehicles and/or premises to monitor the vehicle or premises and/or
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`exert control over devices located at the vehicle or premises. As indicated in the
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`‘363 patent:
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`“While anti-theft and/or security systems exist for
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`residential and/or commercial premises, such systems fail
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`to enable the owner or occupant and/or other authorized
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`individual to conveniently and effectively exercise and/or
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`perform control, monitoring and/or security functions
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`with
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`regards
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`to
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`these premises. The ability
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`to
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`conveniently and effectively enable one to exercise
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`and/or to perform control, monitoring and/or security
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`functions would prove to be invaluable in allowing
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`owners, occupants and/or other authorized individuals to
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`exercise and/or to provide control, monitoring and/or
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`security functions over these premises, from a remote
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`location and at any time.” (emphasis added). EX1001 at
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`2:63 – 3:08.
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`B.
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`Prosecution History of the ‘363 Patent
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`The patent application that issued as the ‘363 patent was filed on September
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`16, 2002. EX1001. The ‘363 patent issued on July 8, 2008. Id.
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`During prosecution, the applicant chose to be his own lexicographer and
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`provided explicit definitions for various terms, including “communication device”
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`in “Supplement to the Remarks for the Amendment filed on October 24, 2007”
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`filed on November 23, 2007 during prosecution of the patent application that
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`issued as the ‘363 patent (see EX2012, hereinafter “First Remarks”).
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`C.
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`Petition Overview
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`Petitioners have proposed two grounds of invalidity and rely on the
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`following three references:
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`1.
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`2.
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`U.S. Patent No. 5,061,916 to French et al. (“French”);
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`Peter Fuhr et al., “Remote Monitoring of Instrumented Structures
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`Using the INTERNET Information Superhighway”, published in Second European
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`Conference on Smart Structures and Materials, (1994) at 148-151 (“Fuhr”); and
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`3.
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`Sheng, Samuel et al., “A Portable Multimedia Terminal: Successful
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`personal communications terminals will depend upon the smooth integration of
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`computation and communications facilities in a lightweight unit,” published in
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`IEEE Communications Magazine (December 1992) at 64-75 (“Sheng”).
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`The table below summarizes Petitioners’ grounds of invalidity.
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`Ground
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`1
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`2
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`Claims
`42, 44, 46, 48,
`53, 54, 84 and
`86
`43, 45 and 84
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`Proposed Rejections
`obvious under 35 U.S.C. § 103(a) over French
`in view of Fuhr
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`obvious under 35 U.S.C. § 103(a) over Fuhr in
`view of Sheng
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`Claims 42 and 84 are independent claims. They are reproduced below:
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`42. An apparatus, comprising:
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`a first processing device, wherein the first processing device at least
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`one of monitors and detects an event regarding at least one of a premises system, a
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`premises equipment system, a premises component, a premises device, a premises
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`equipment, and a premises appliance, of a premises, wherein the first processing
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`device is located at the premises, and further wherein the event is a detection of a
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`state of disrepair of the at least one of a premises system, a premises equipment
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`system, a premises component, a premises device, a premises equipment, and a
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`premises appliance, wherein the first processing device at least one of generates a
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`first signal and transmits a first signal to a second processing device, wherein the
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`first signal contains information regarding the event, and further wherein the
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`second processing device is located at a location which is remote from the
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`premises, wherein the second processing device automatically receives the first
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`signal, and further wherein the second processing device at least one of generates a
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`second signal and transmits a second signal to a communication device, wherein
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`the second signal is transmitted to the communication device via, on, or over, at
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`least one of the Internet and the World Wide Web, wherein the communication
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`device is located remote from the second processing device, and wherein the
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`communication device automatically receives the second signal, and further
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`wherein the communication device provides information regarding the event.
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`84. An apparatus, comprising:
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`a first processing device, wherein the first processing device at least
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`one of monitors and detects an event regarding at least one of a premises system, a
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`premises equipment system, a premises component, a premises device, a premises
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`equipment, and a premises appliance, of, at, or associated with, a premises,
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`wherein the first processing device is located at the premises, wherein the event is
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`a detection of a state of disrepair of the at least one of a premises system, a
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`premises equipment system, a premises component, a premises device, a premises
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`equipment, and a premises appliance, wherein the first processing device at least
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`one of generates a first signal and transmits a first signal to a second processing
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`device, wherein the first signal contains information regarding the event, wherein
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`the second processing device is associated with a web site, and further wherein the
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`second processing device is located at a location which is remote from the
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`premises, wherein the second processing device automatically receives the first
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`signal, and further wherein the second processing device at least one of generates a
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`second signal and transmits a second signal to a communication device, wherein
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`the second signal is transmitted to the communication device via, on, or over, at
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`least one of the Internet and the World Wide Web, wherein the communication
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`device is located remote from the second processing device, and wherein the
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`communication device automatically receives the second signal, and further
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`wherein the communication device provides information regarding the event.
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`III. THE PETITION SHOULD BE DENIED BECAUSE IT IS BARRED
`UNDER 35 U.S.C. § 315(b)
`A.
`Background
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`In spite of well-known risks and in the face of clear warnings, Petitioners
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`intentionally engaged in a deliberate course of conduct that should have, and
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`properly did, result in their petitions being accorded a filing date of June 24, 2015
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`– one day after the statutory bar period. Now, Petitioners seek to have the Board
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`save them from the consequences flowing directly from their decisions.
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`Two of the Petitioners (Terremark and Time Warner) were served with
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`complaints for infringement of the ’363 and 130 patents on June 23, 2014.
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`(EX2001 (hereinafter “Vazquez Decl.,”) ¶¶ 1-4, EX2002-2005). Over the last
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`year, the parties have engaged in extensive discovery in the District of Delaware.
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`This discovery includes Initial Disclosures, interrogatories and requests for
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`documents directed to each Defendant, production and review of more than 4,600
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`pages of “core technical documents,” and initial scheduling of depositions. Initial
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`infringement and invalidity contentions have also been exchanged. In February
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`2015, the parties jointly requested, and the Court entered, a case progression
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`schedule with significant dates including: Claim Construction Opening Brief
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`(October 23, 2015); Answering Brief (November 20); and Markman Hearing
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`(December 21). The Court also set dates for fact and expert discovery, summary
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`judgment, and trial.
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`In late June 2015, without warning, Petitioners here filed seven petitions
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`seeking IPR.1 On June 22, these Petitioners filed, but intentionally did not serve,
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`1 In addition to the seven petitions filed by Petitioners regarding five of Patent
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`IPR2015-1466. Then on June 23, Petitioners filed, but intentionally did not serve,
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`IPR2015-1476 and 1477. Then on June 24, a day after the one year bar, Petitioners
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`finally filed IPR2015-1482, 1484, 1485 and 1486, finally payed for IPR2015-
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`1482, 1484, 1485 and 1486, and finally served all seven petitions. Vazquez Decl.,
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`¶¶ 7-8, Exh. 2006-2007. Each of these filings has been marred by errors, as well as
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`repeated, intentional misrepresentations to Patent Owner and the PTAB, including
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`the filing of false certificates of service (COS) for all seven petitions. Revised
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`COSs were filed with respect to only four IPR petitions, and only after Patent
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`Owner discovered and raised the false statements.
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`B.
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`The Petition is Time Barred
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`IPR petitions may not be filed more than one year after Petitioners were
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`served with a complaint alleging infringement. 35 U.S.C. § 315(b). This time bar
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`Owner’s patents, CoxCom has now filed three additional IPR petitions purportedly
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`seeking review of the 130 patent (IPR2015-01760), the ’363 patent (IPR2015-
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`01762) and the ‘010 patent (IPR2015-01765). Counsel for Petitioner CoxCom has
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`also filed four additional petitions regarding Patent Owner’s patents for a different
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`client, Nissan North America, Inc.
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`is statutory and cannot be waived or extended by the Board. As discussed supra,
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`two of the Petitioners (Terremark North America LLC and Time Warner Cable
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`Inc.) were served with a complaint for infringement of the ’363 patent on June 23,
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`2014. Vazquez Decl., ¶¶ 1-4, EX2002-2005.
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`The Petition was properly accorded a filing date of June 24, 2015, one day
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`after the statutory one-year bar date expired. The Petition is thus statutorily barred
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`as having been filed past the one-year window. 35 U.S.C. § 315(b). The same one-
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`year time bar is found in the USPTO’s trial practice rules. 37 C.F.R. § 42.101(b).
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`C.
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`Petitioners’ Motion
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`Petitioners filed a “Motion to Recognize June 23, 2015 as Filing date of
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`Petition for Inter Partes Review of U.S. Patent No. 6,549,363” on August 5, 2015.
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`(“Motion”) Paper 6. Patent Owner filed “Patent Owner’s Opposition to Motion to
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`Recognize June 23 Filing Date of Petition” on August 19, 2015. (“Opposition”)
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`Paper 7. As of the date of this Preliminary Response, the Board had not yet ruled
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`on Petitioners’ motion.
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`For the reasons discussed infra, the filing date of June 24, 2015 that was
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`properly accorded to the Petition should not be changed.
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`The Petitions Were Not Timely Filed, Fees Were Not Timely Paid
`D.
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` and the Petitions Were Not Timely Served
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`IPR petitions are accorded a filing date only after three separate acts are
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`completed. See, e.g., 37 C.F.R. § 42.106 (filing of completed IPR petition; service
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`of completed petition on patent owner at correspondence address of record; and
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`payment of fees). Practitioners are warned by the regulations that “[a] petition to
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`institute inter partes review will not be accorded a filing date until the petition
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`satisfies [such] requirements.”
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`Lawyers have long known of the risks of delaying filings until the last
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`minutes. In fact, large law firms have warned each other of these risks for many
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`years. See, e.g., “New Risks Every Litigator Should Know,” W. Kelly Stewart,
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`Jeffrey L. Mills, Jones Day (2011). Such warnings routinely include descriptions
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`of cases where filing parties have been denied the ability to pursue claims because
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`of missed deadlines. See, e.g., id., p. 29, citing PHL Variable Ins. Co. v. U.S. Bank
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`Nat’l Ass’n, Civ. No. 10-1197 (D. Minn. Oct. 4, 2010). Known risks include
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`improperly converting documents, filing the wrong document, and trying to file
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`documents that exceed file-size limits. Id. Moreover, courts have advised
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`attorneys
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`that “[c]omputer failures, not unlike human failures, must be
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`anticipated.” Martinelli v. Farm-Rite, 785 A. 2d 33, 36 (2001). See also Graves v.
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`Deutsche Bank Sec., Inc., Case No. 07 cv 05471, p. 4 (S.D.N.Y. Mar. 4, 2011).
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`13 13
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`Case IPR2015-01482
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`Preliminary Response of Patent Owner
`Patent 7,397,363
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`Here, Petitioners’ motions and supporting exhibits demonstrate that
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`Petitioners deliberately waited until the eleventh hour to finalize their petitions for
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`filing. Petitioners admit that they did not finalize the “petitions, exhibits, powers of
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`attorney and payment means” until 10:45 pm on June 23, 2015. IPR2015-01482,
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`Paper 6 at 3. Despite the late hour, and despite representation by five attorneys
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`from three different large law firms, Petitioners deliberately decided to have one
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`paralegal file the petitions serially, rather than have multiple people file the
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`petitions simultaneously. Id. at 4. Petitioners now contend that “the petitions were
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`done in sequential order to avoid having to reload any previously submitted
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`exhibits.” Id. But this explanation does not make sense, as the PRPS system
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`requires separate uploading and filing of documents in each separate petition.
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`Vazquez Decl., ¶¶ 9-11.
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`Moreover, Petitioners own filings demonstrate this did not happen.
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`Petitioners did not cross-reference earlier-filed documents in later-filed petitions,
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`but instead re-filed numerous duplicative exhibits in each of the three petitions at
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`issue. See, e.g., “Curriculum Vitae of Richard Bennet,” filed as Exh. 1003 in
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`IPR2015-01482, -01485 and -01486; “U.S. Patent Application No. 08/622,749,”
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`filed as Exh. 1004 in IPR2015-01482, -01485 and -01486. Petitioners’ argument
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`14 14
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`that “the second … and third petition … could not be filed until the first filing was
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`completed” cannot be true. Vazquez Decl., ¶¶ 9-11. Petitioners easily could have
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`had multiple persons upload
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`these petitions and supporting documents
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`simultaneously. They simply chose not to do so. As a result, they did not
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`accomplish any of the tasks required for according their IPRs a filing date of June
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`23, and did not even attempt eight of those nine tasks until June 24.
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`Defendants also deliberately decided not to serve the petitions and
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`supporting documents on June 23. Petitioners allege that “Copies of the three
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`petitions, corresponding exhibits and powers of attorney were printed no later than
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`11:15 pm est and were prepared for service.” See, e.g., IPR2015-01482, Paper 7,
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`Robinson Decl. at ¶ 4. Petitioners further allege that their counsel “was prepared to
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`serve the three petitions and accompanying documents” by driving them to an
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`unidentified U.S. Post Office that is purportedly open until midnight. Id. Crucially,
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`however, this service did not happen. Rather than serve the documents on June 23
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`as required by the governing statute and trial practice rules, Petitioners’ counsel
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`made a deliberate decision to forego even attempting such service until June 24.
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`Petitioners have not offered the Board a declaration from the attorney
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`involved, instead relying on their paralegal’s hearsay statement that Petitioners’
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`15 15
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`Case IPR2015-01482
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`Preliminary Response of Patent Owner
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`counsel “remained in the office to focus on solving the problems we were
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`experiencing with filing the petitions with the PRPS system.” Id. But Petitioners
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`offer no explanation as to why their alleged filing problems prevented timely
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`service. Filing and service are independent events, as evidenced by the fact that
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`Petitioners printed the documents for service before completing the electronic
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`filing. Id. There is no legitimate reason Petitioners could not have at least
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`attempted service before midnight on June 23 as they now claim they planned to
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`do. Petitioners’ counsel simply chose not to do so.
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`Finally, although Petitioners acknowledge that they chose not to serve the
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`petitions until June 24, they nevertheless filed a COS with the Board in each
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`petition attesting that the documents “ha[d] been served via U.S. Postal Service
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`Express Mail on June 23, 2015.” See IPR2015-01482, Paper 1 at 44; IPR2015-
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`01485, Paper 1 at 42; IPR2015-01486, Paper 1 at 60. Each COS is false, as the
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`documents were admittedly not mailed until the next morning, June 24, 2015. See,
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`e.g., Paper 7, Robinson Decl. at Att. B; Vazquez Decl., ¶¶ 7, 13, Exh. 2006.
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`Petitioners have not filed a corrected COS for any of these Petitions. Vazquez
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`Decl., ¶ 13, Exh. 2008.
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`E.
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`The Petition was Incomplete
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`16 16
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`Preliminary Response of Patent Owner
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`The only one of the three petitions Petitioners attempted to file on June 23,
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`2015, was the present Petition. Petitioners not only failed to timely file, pay for and
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`serve this Petition, but the supporting documents they filed and served on June 24,
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`2015 did not include the expert declaration cited and relied on in the petition. Paper
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`7 at 5-6. Petitioners were not provided a copy of the correct expert declaration until
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`July 29, 2015, more than 5 weeks after Petitioners’ requested filing date, by which
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`time more than 1/3 of Patent Owner’s time to prepare its preliminary response had
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`passed. Vazquez Decl, ¶ 15-17, Exh. 2009-10.
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`Petitioners have Engaged in a Course of Conduct that has
`F.
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` Deprived the PTAB of Jurisdiction Over This Petitions
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`As explained infra, the Petition was not timely filed, paid for or served. The
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`Petition cannot now be “corrected” under 37 CFR § 42.104(c) because Petitioners
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`have not identified any “clerical or typographical error” that prevented them from
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`even timely attempting, much less timely accomplishing, any of the 9 tasks
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`required for according the Petition an earlier filing date.
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`Petitioners Intentionally Delayed Completing the Filing of the
`G.
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` Petitions Until June 24, 2015
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`Petitioners’ counsel claim they experienced some unknown “issue” with the
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`electronic filing of the Petition. Even if their arguments regarding the Petition are
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`17 17
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`Case IPR2015-01482
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`Preliminary Response of Patent Owner
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`accepted, Petitioners still chose to make no effort to file, pay for, or serve the
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`Petition until June 24, 2015. The facts demonstrate Petitioners’ counsel made a
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`choice to not meet, or even attempt to meet, any of the statutory requirements. No
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`clerical error exists – it was a lapse in professional judgment resulting in loss of
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`jurisdiction that cannot now be corrected.
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`Of concern, none of these facts were presented by Petitioners to the PTAB
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`when they sought leave to file their Motion. Nor were these facts presented to the
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`Board paralegal who was contacted ex parte by Petitioners’ counsel. See, e.g.,
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`Paper 7, Robinson Decl. at Exh. 2 (6/26 email from C. Holloway to
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`trials@uspto.gov). But for this paralegal, Petitioners may have gotten away with
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`their deceit.
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`H.
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`Petitioners’ Expert Declaration was not Timely Served
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`Petitioners admit they did not serve a critical document – their expert
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`declaration (the “Bennett Declaration”) – until more than five weeks after
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`expiration of the one year bar date, and did not file the correct declaration until
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`they filed the Motion. The Bennett Declaration provides essential information
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`missing from the Petition itself – both direct “support” for Petitioners’ arguments
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`and critical conclusions and interpretations reached and relied upon by Petitioners’
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`Case IPR2015-01482
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`The failure to properly file and serve the Bennet Declaration has
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`undoubtedly prejudiced JCMS is sufficient for the Board to deny the Petition and
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`decline to institute inter partes review of the Challenged Claims. At the very least,
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`the Bennet Declaration should be given no weight in view of the fact that it was
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`served more than 5 weeks after the filing date of the Petition and more than 5
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`weeks after the expiration of the one year bar date.
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`Petitioners’ Counsel have Breached The
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