Paper No. ________
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`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS, INC., and
` NOVATEL WIRELESS, INC.
`Petitioners
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`
`
`
`Case IPR2015-01670
`Patent No. 8,648,717 B2
`_______________
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`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`TABLE OF CONTENTS
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`
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 1
`
`III. CLAIM CONSTRUCTION ............................................................................ 2
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`A.
`
`B.
`
`C.
`
`Coded Number ...................................................................................... 3
`
`Transmission ......................................................................................... 5
`
`The Number and Content of Transmissions Falling within the
`Claim Scope .......................................................................................... 5
`
`IV. STANDARD FOR INSTITUTING INTER PARTES REVIEW ..................... 6
`
`V. GROUNDS 1, 2, 3, AND 4 SHOULD BE DENIED BECAUSE
`THEY PRESENT THE SAME ART AND ARGUMENT
`PREVIOUSLY CONSIDERED BY THE OFFICE ........................................ 7
`
`A.
`
`The Art Relied on Was Considered During Prosecution ...................... 8
`
`1.
`
`2.
`
`Kennedy was considered during prosecution of the ’717
`patent ........................................................................................... 8
`
`Gaukel was considered during prosecution of the ’717
`patent ........................................................................................... 9
`
`The Petitioners Make No Attempt to Overcome the
`Presumption of Administrative Correctness ......................................... 9
`
`Petitioners Add Nothing More than What Is Already in the
`Record with Respect to Kennedy and Gaukel.....................................12
`
`B.
`
`C.
`
`VI. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`DEMONSTRATE A REASONABLE LIKELIHOOD OF SUCCESS ........13
`
`A. Kennedy Fails to Disclose Material Elements Present in All
`Independent Claims .............................................................................15
`
`
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`
`1.
`
`“a programmable interface for establishing a
`communication link with at least one monitored technical
`device” (element (b)) ................................................................17
`
`2.
`
`3.
`
`4.
`
`5.
`
`“and a processing module for authenticating one or more
`wireless transmissions sent from a programming
`transmitter and received by the programmable
`communicator device by determining if at least one
`transmission contains a coded number” (element (d)) .............20
`
`“wherein the programmable communicator device is
`configured to use a memory to store at least one
`telephone number or IP address included within at least
`one of the transmissions as one or more stored telephone
`numbers or IP addresses if the processing module
`authenticates the at least one of the transmissions
`including the at least one telephone number or IP address
`and the coded number by determining that the at least
`one of the transmissions includes the coded number”
`(element (e)) ..............................................................................25
`
`Kennedy does not disclose all of the elements of claim 24 ......28
`
`Kennedy does not disclose all of the elements of claim 29 ......29
`
`B.
`
`Kennedy Fails to Disclose Material Elements Present in
`Dependent Claims 4, 5, 12, and 26 .....................................................30
`
`1.
`
`2.
`
`A programmable communicator device according to
`claim 1 wherein the programmable communicator device
`is configured to process wireless transmissions compliant
`with Bluetooth wireless air interface standards. (Claim 4) .......30
`
`A programmable communicator device according to
`claim 1 further configured to request that an at least one
`monitored technical device send data through the
`programmable interface for processing by the
`programmable communicator device in response to
`programming instructions received in an incoming
`wireless packet switched data message. (Claim 5) ...................32
`
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`3.
`
`A programmable communicator device according to
`claim 1 further configured to request that an at least one
`monitored technical device send data through the
`programmable interface for receipt by the programmable
`communicator device in response to programming
`instructions received in an incoming wireless packet
`switched data message. (Claim 12) ...........................................33
`
`4.
`
`A programmable communicator device according to
`claim 25 further configured to request that an at least one
`monitored technical device send data through the
`programmable interface for receipt by the programmable
`communicator device in response to programming
`instructions received in an incoming short message
`service (SMS) data message, a GPRS message, or any
`wireless packet switched data message. (Claim 26) .................34
`
`C.
`
`Petitioners’ Obviousness Analysis Is Inadequate ...............................34
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The Petitioners failed to articulate the differences
`between the claimed invention and the prior art .......................35
`
`The Petitioners have not provided an adequate rationale
`to combine the references .........................................................37
`
`There is no support for the proposed combination of
`Kennedy with the AAPA ..........................................................40
`
`The Petitioners provide no support for their Ground 1 or
`“alternative” Ground 4 obviousness arguments .......................40
`
`The Petitioners provide no analysis for their Ground 2
`obviousness argument ...............................................................42
`
`The Petitioners provide no analysis for their Ground 3
`obviousness argument ...............................................................43
`
`VII. CONCLUSION ..............................................................................................44
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`
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`iii
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`CAE Screenplates, Inc. v. Heinrich Fiedler Gmbh & Co. KG,
`224 F.3d 1308 (Fed. Cir. 2000) ............................................................................ 4
`
`Graham v. John Deere Co.
`383 U.S. 1 (1966) ................................................................................................ 35
`
`Heart Failure Technologies, LLC v. CardioKinetix ................................................ 37
`IPR2013-00183, (PTAB July 31, 2013)
`
`Integrated Global Concepts, Inc. v. Advanced Messaging
`Technologies, Inc.,
`IPR2014-01027, (PTAB December 22, 2014) ................................................... 12
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01402, (PTAB October 21, 2015) ..................................... 14, 35, 36, 37
`
`Karim v. Jobson,
`Interference No. 105,376, Paper 99, p. 10 (B.P.A.I. Feb. 28, 2007) ................. 10
`
`
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, (PTAB September 23, 2014) ................................. 38, 39, 40, 43
`
`KSR Int’l Co. v Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 35
`
`Luminara Worldwide, LLC v. Shenzhen Liown Electronics Co. LTD,
`IPR2015-01183, (PTAB November 5, 2015) ...................................36, 37, 38, 39
`
`Parsons v. United States,
`670 F.2d 164 (Ct. Cl. 1982) .................................................................................. 9
`
`In re Portola Packaging, Inc.,
`110 F.3d 786 (Fed. Cir. 1997) ............................................................................ 10
`
`iv
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .......................................................................... 10
`
`Praxair Distribution, Inc. v. Ino Therapeutics, LLC.,
`IPR2015-00893, (PTAB September 22, 2015) ................................................... 12
`
`Prism Pharma Co., LTD v. Choongwae Pharma Corp.,
`IPR2014-00315, (PTAB July 8, 2014) ............................................................... 12
`
`Sanders v. United States Postal Service,
`801 F.2d 1328 (Fed. Cir. 1986) .......................................................................... 10
`
`Shire, LLC v. Amneal Pharms.,
`802 F.3d 1301 (Fed. Cir. 2015) .................................................................... 10, 11
`
`Statutes
`
`35 U.S.C. § 103 ....................................................................................................... 14
`
`35 U.S.C. § 313 .......................................................................................................... 7
`
`35 U.S.C. § 314(a) ................................................................................................. 6, 7
`
`35 U.S.C. § 325(d) ......................................................................................... 8, 12, 13
`
`Other Authorities
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`
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`v
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`I.
`
`INTRODUCTION
`
`M2M Solutions LLC (“M2M”) submits this preliminary response under 35
`
`U.S.C. § 313 and 37 C.F.R. § 42.107 to the petition of Enfora, Inc., Novatel
`
`Wireless Solutions, Inc., and Novatel Wireless, Inc. (collectively, “Petitioners”) for
`
`inter partes review of claims 1-7, 10-20, and 23-30 of U.S. Patent No. 8,678,717
`
`(“the ’717 Patent”). This preliminary response is timely filed within three months
`
`of the Board’s notice, mailed August 13, 2015. For the reasons set forth herein and
`
`in the accompanying exhibits, Petitioners’ petition for inter partes review should
`
`be denied.
`
`II. BACKGROUND
`The claimed inventions of the ’717 patent relate to wireless modules and
`
`related devices designed and intended for use in machine-to-machine
`
`communications. These machine-to-machine communications encompass a variety
`
`of applications in which one machine is able to remotely monitor a second machine
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`in a relatively autonomous fashion by communicating with or through a wireless
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`module that is embedded in or otherwise linked to that second machine. For
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`example, machine-to-machine applications are prevalent in the fields of automated
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`meter reading, asset tracking and fleet management, automotive telematics,
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`commercial and residential security systems, wireless telemedicine and healthcare
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`devices, industrial automation and controls, remote information displays and
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`digital signage, and the remote control of certain consumer devices and appliances,
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`point of sale payment systems, vending machines, kiosks, and ATM and banking
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`machines.
`
`Petitioners argue that the ’717 patent states that it discloses the “same
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`Hotlink communicator device that was in the prior art Hotlink communicator
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`patent application” (AAPA). (Petition for Inter Partes Review (“Pet.”) at 4-5.)
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`This is not true. The hotlink communicator disclosed in the ’717 patent has been
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`fundamentally altered by the addition of a “programmable interface” for
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`connecting to external devices, and software for performing intelligent data
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`monitoring functions. (Ex. 1001 at 9:2-6.) By contrast, the prior art Hotlink
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`communicator was simply a single-button telephone that a child could use to call
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`his parents in emergency situations. (Ex. 1002 at Fig.1.) It performed no
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`monitoring functions whatsoever relative to external devices and lacked any type
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`of interface. (See Ex. 1002.)
`
`III. CLAIM CONSTRUCTION
`Petitioners propose construction for five terms. Of those five terms, M2M
`
`proposes that a plain and ordinary meaning is correct for “a programmable
`
`interface” and “unique identifier” and there is no need for the Board to construe
`
`those terms. M2M disagrees with the proposed constructions for the other three
`
`terms for the following reasons.
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`2
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`A. Coded Number
`Petitioners wrongly seek to define a “coded number” as being a unique
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`identifier of the programmable communicator device “where unique means unique
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`within the system the communicator device is used.” (Pet. at 11-12.) However,
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`the intrinsic record clearly teaches that the term “coded number” is broader than a
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`unique identifier. M2M also took this same position in the Markman proceedings
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`in the ’010 patent litigations. (See Ex. 1022, 83-92.) The specification and claims
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`of the ’717 patent teach that the “coded number” can be used for two purposes.
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`First, the coded number can be included in an incoming transmission containing
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`programing instructions to allow the programmable communicator device to
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`authenticate those instructions as having originated from an approved remote
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`device. (Ex. 1001 at 4:45-50, 9:35-59, Claims 1, 24 and 29.) Second, a “coded
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`number” can be required by the programmable communicator device in order to
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`permit a remote device to gain “access” to certain categories of information.
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`(Ex. 1001at 6:40-49; 10:1-4, Claims 1, 24.) The specification makes clear that the
`
`term “coded number” is intended to broadly cover any type of coded number used
`
`for one of those purposes. While the specification discloses a preferred
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`embodiment in which the PUK code associated with the programmable
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`communicator’s SIM card could be the “coded number,” it expressly provides that
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`“[i]t is further to be understood that the invention may make use of all coding
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`schemes for storing numbers to the programmable apparatus and the use of the
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`PUK code was by way of example only.” (Ex. 1001 at 12:25-28.)
`
`The District Court expressly rejected Defendants’ (Petitioners’) proposed
`
`construction that a “coded number” needed to be a unique identifier and construed
`
`the term as “a designated, unique sequence of characters.” (Ex. 1023 at 8-9.)
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`Moreover, Petitioners are improperly conflating the terms “coded number” and
`
`“unique identifier” which are separate and distinct claim terms used within the
`
`same claims and thus necessarily must have different meaning. CAE Screenplates,
`
`Inc. v. Heinrich Fiedler Gmbh & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000)
`
`(presumption “that the use of different terms in claims connotes different
`
`meanings.”)
`
`Relatedly, Petitioners wrongly argue that the ’717 patent teaches that a
`
`telephone number can be considered a “unique code” (i.e., the claimed “coded
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`number”). (Pet. at 11 citing Ex. 1001 at 9:24-25.) The passage cited by Petitioners
`
`actually indicates that the programming instructions that are used to initially
`
`program an outbound restrictive calling list will comprise both the telephone
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`number to be stored into the list, and a “unique code” to be used for future
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`programming authentication purposes. (Ex. 1001 at :24-25.) There is no teaching
`
`that the telephone number is itself the “unique code.”
`
`
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`4
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`
`Transmission
`
`B.
`M2M disagrees with Petitioners’ construction of transmission that a
`
`“transmission” is “a portion of a message.” (Pet. at 12-13.) This proposed
`
`construction is at odds with the claim language itself. For example, claim elements
`
`1(d) and 1(h) recite that, a “one . . . wireless transmission[]” can “comprise[] a
`
`General Packet Radio Service (GPRS) or other packet switched data message.”
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`This shows that a message is a part of a transmission – the transmission comprises
`
`a message – not the other way around. Therefore, Petitioners proposed
`
`construction of transmission should be rejected.
`
`C. The Number and Content of Transmissions Falling within the
`Claim Scope
`
`Petitioners argue that the type of “coded number” authentication required in
`
`independent claims 1, 24 and 29 can be performed on multiple incoming
`
`transmissions in which the “coded number” can be contained in a first
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`transmission, and the telephone number or IP address for storing into an outbound
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`restrictive calling list can be contained in a second transmission. (Pet. at 13-16.)
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`This is not correct. The claim language itself requires that authentication be
`
`performed on a single transmission that includes both the “coded number” and the
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`telephone number or IP address for storing into an outbound restrictive calling list.
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`(Ex. 1001 at claims 1, 24 and 29.) Therefore, Petitioners’ proposed construction is
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`an incorrect for at least the following three reasons.
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`First, the claim language expressly recites that the authentication must be
`
`performed on an “at least one of the transmissions including the at least one
`
`telephone number or IP address and the coded number.” As such, a single
`
`transmission is clearly required.
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`Second, as Petitioners suggest, throughout the prosecution histories for the
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`programmable communicator device patent family, the examiner required that the
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`“single transmission” element be present in the claims as a necessary point of
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`novelty. (Pet. at 15-16; see e.g. Ex. 1007 at 79; Ex. 1011 at 344-45.)
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`Third, in the pending ’717 patent litigations, Petitioners admits to the “single
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`transmission” requirement. Indeed, Petitioners’ current proposed claim
`
`construction for the relevant language of claim element 1(e) is the following: “a
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`single wireless transmission that includes both the coded number and the telephone
`
`or IP address.” (Ex. 1024 at 1.)
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`IV. STANDARD FOR INSTITUTING INTER PARTES REVIEW
`The Board may not grant a petition for inter partes review unless the Board
`
`“determines that the information presented in the petition filed under section 311
`
`and any response filed under section 313 shows that there is a reasonable
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`likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).
`
`Section 314(a) requires the Board’s determination to be based on
`
`“information presented in the petition.” Likewise, the petitioners have a statutory
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`Inter Partes Review of U.S. Patent No. 8,648,717
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`obligation under § 312(a)(3) to identify “with particularity, each claim challenged,
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`the grounds on which the challenge to each claim is based, and the evidence that
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`supports the grounds for the challenge to each claim.” Thus, it is not for the Board
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`to fill in gaps omitted by the petitioners.
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`Equally important is § 314(a)’s requirement that the Board’s determination
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`take into account “information presented in . . . any response filed under section
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`313.” In other words, the Board’s determination must be based on the totality of
`
`the written evidence presented at the pre-trial stage.
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`Ultimately, the focus of the inquiry under § 314(a) is whether the petitioners
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`“would prevail”—i.e., win on the merits based exclusively on the “information
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`presented in the petition . . . and any response.” 35 U.S.C. § 314(a).
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`As detailed below, Petitioners have not satisfied their burden of proving
`
`unpatentability by a preponderance of the evidence and the petition for inter partes
`
`review should be denied.
`
`V. GROUNDS 1, 2, 3, AND 4 SHOULD BE DENIED BECAUSE THEY
`PRESENT THE SAME ART AND ARGUMENT PREVIOUSLY
`CONSIDERED BY THE OFFICE
`
`The art relied on for Grounds 1, 2, 3, and 4 was previously considered by the
`
`PTO during prosecution of the ’717 patent. As a result, the Petitioners bear a
`
`heightened burden of overcoming the presumption of administrative correctness
`
`that accompanies an examiner’s performance of his or her job. The Petitioners
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`made no attempt to demonstrate that they could overcome this presumption, and
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`the petition should be denied on that basis alone.
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`In addition, because thepPetition presents both the same art and substantially
`
`the same arguments previously considered and rejected by the PTO examiner, the
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`Board should exercise its discretion to deny Grounds 1, 2, 3, and 4 under § 325(d)
`
`because “the same or substantially the same prior art or arguments were previously
`
`presented to the Office.” 35 U.S.C. § 325(d).
`
`A. The Art Relied on Was Considered During Prosecution
`1. Kennedy was considered during prosecution of the ’717
`patent
`
`Kennedy (Ex. 1026), relied on for Grounds 1, 2, 3, and 4, is the very same
`
`prior art that was presented and considered by the examiner during prosecution
`
`(Ex. 1003 at 136), as shown on the face of the ’717 patent under “References
`
`Cited.” (Ex. 1001, p. 2.) More than that, the patent owner submitted claim charts
`
`from the Petitioners (and their co-defendants) that laid out in detail the Petitioners’
`
`support for their position that the parent of the ’717 patent was invalid in view of
`
`Kennedy. (See Ex. 2002 at 12-67.) These contentions were considered by the
`
`PTO examiner, as evidenced by their listing on the face of the ’717 patent. (Ex.
`
`1001 at 3, col. 2, second reference from bottom; Ex. 1003 at 149.) Thus, not only
`
`was the Kennedy reference before the PTO examiner, but the very arguments
`
`raised by the Petitioners were previously raised and rejected before the examiner.
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`2. Gaukel was considered during prosecution of the ’717
`patent
`
`Gaukel (Ex. 1027), relied on as a secondary reference for Ground 2, was
`
`also presented to and considered by the examiner during prosecution. (Ex. 1003 at
`
`137.) It is shown on the face of the ’717 patent under “References Cited.” (Ex.
`
`1001, p. 2.)
`
`B.
`
`The Petitioners Make No Attempt to Overcome the Presumption
`of Administrative Correctness
`
`Because the examiner properly considered and fully evaluated Kennedy and
`
`Gaukel, the Petitioners bear a heightened burden of overcoming the presumption of
`
`administrative correctness. The Petitioners make no attempt to demonstrate that
`
`they can overcome that presumption, and the Board should deny the petition on
`
`that basis alone.
`
`For decades, the Supreme Court, the Federal Circuit, and its predecessor the
`
`Court of Claims have announced and repeatedly upheld a presumption of
`
`administrative correctness for agency action: “It is well established that there is a
`
`presumption that public officers perform their duties correctly, fairly, in good faith,
`
`and in accordance with law and governing regulations and the burden is on the
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`plaintiff to prove otherwise.” Parsons v. United States, 670 F.2d 164, 166 (Ct. Cl.
`
`1982) (citing United States v. Chemical Found., Inc., 272 U.S. 1, 12, 14-15
`
`(1926)). “There is a strong presumption in the law that administrative actions are
`
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`correct and taken in good faith.” Sanders v. United States Postal Service, 801 F.2d
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`1328, 1331 (Fed. Cir. 1986).
`
`The Federal Circuit has consistently applied that presumption in the context
`
`of patent law. See, e.g., PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
`
`1304 (Fed. Cir. 2008) (examiners are assumed to have expertise in evaluating the
`
`references). Furthermore, the Federal Circuit has applied the presumption on
`
`direct review of Board decisions. In re Portola Packaging, Inc., 110 F.3d 786, 790
`
`(Fed. Cir. 1997) (patent examiners are presumed to have “properly discharged their
`
`official duties”) (overruled on other grounds by 35 U.S.C. § 303(a)).
`
`Moreover, the Board itself has applied this presumption in a contested
`
`proceeding – an interference. Karim v. Jobson, Interference No. 105,376, Paper
`
`99, p. 10 (B.P.A.I. Feb. 28, 2007) (“examiners in the USPTO are deserving of the
`
`presumption expressed by the Federal Circuit.”).
`
`In a recent decision, the Federal Circuit applied this presumption in
`
`affirming a summary judgment of validity, explaining that the primary reference
`
`“is listed on the face of the patents-in-suit and therefore the examiner is presumed
`
`to have considered it.” Shire, LLC v. Amneal Pharms., 802 F.3d 1301 (Fed. Cir.
`
`2015). The Federal Circuit explained that, in such a situation, a patent challenger
`
`therefore has “‘the added burden of overcoming the deference that is due to a
`
`qualified government agency presumed to have properly done its job, which
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`includes one or more examiners who are assumed to have some expertise in
`
`interpreting the references and to be familiar from their work with the level of skill
`
`in the art and whose duty it is to issue only valid patents.’” Id. (emphasis added)
`
`(quoting PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir.
`
`2008)).
`
`Here, as with the reference in Shire, Kennedy and Gaukel appear on the face
`
`of the patent. Each of these references was presented to and considered by the
`
`examiner during prosecution. (Ex. 1003 at 136-137.) In addition, as noted above,
`
`the Petitioners’ claim chart, showing their invalidity position for Kennedy, was
`
`presented to examiner. Based on the well-settled presumption that the examiner
`
`did his job and the unrebutted presumption of administrative correctness, the
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`examiner fully evaluated each reference.
`
`The Petitioners made no attempt to demonstrate that they could overcome
`
`the “added burden of overcoming the deference that is due to a qualified
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`government agency presumed to have properly done its job.” Shire, 802 F.3d
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`1301 (emphasis added). Petitioners should not be permitted to consume the
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`resources of both M2M and the Board to retread ground already covered by the
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`PTO. Because the art was previously considered and the Petitioners made no
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`attempt to overcome their added burden, the Board should deny institution of inter
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`partes review.
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`C.
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`Petitioners Add Nothing More than What Is Already in the
`Record with Respect to Kennedy and Gaukel
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`The Board has previously exercised its discretion under 35 U.S.C. § 325(d)
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`to deny a petition where art and arguments were previously submitted to and
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`considered by the Examiner during prosecution. E.g., Prism Pharma Co., LTD v.
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`Choongwae Pharma Corp., IPR2014-00315, slip op. at 2 (PTAB July 8, 2014)
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`(Paper 14) (informative decision).
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`This case is not like Praxair, where the Petition included “additional
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`evidence not considered by the examiner.” Praxair Distribution, Inc. v. Ino
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`Therapeutics, LLC., IPR2015-00893, slip op. at 9 (PTAB September 22, 2015)
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`(Paper 14). Here, Petitioners and their expert do not supplement the underlying
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`record with respect to Kennedy and Gaukel. Indeed, the claim charts in the
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`Petitioners’ expert declaration are very similar to the claim charts submitted during
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`prosecution and merely parrot – nearly word-for-word – the language used in the
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`petition. (See Ex. 1004, ¶¶106-120, 122-126.) Thus, while Petitioners provide an
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`expert declaration in support of its arguments in Grounds 1-4, the declaration “does
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`not present any persuasive evidence to supplement the record that was in front of
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`the Office.” Integrated Global Concepts, Inc. v. Advanced Messaging
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`Technologies, Inc., IPR2014-01027, slip op. at 7 (PTAB December 22, 2014)
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`(Paper 16).
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`The record is clear: Kennedy and Gaukel were previously presented to the
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`PTO and by offering the references again, without any additional information not
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`previously presented, Petitioners violate 35 U.S.C. § 325(d), and the Board should
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`deny this petition for inter partes review on that basis.
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`VI. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`DEMONSTRATE A REASONABLE LIKELIHOOD OF SUCCESS
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`Petitioners assert four grounds of unpatentability under 35 U.S.C. § 103.1
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`Each ground relies on what Petitioners’ have identified as “Applicant’s Admitted
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`Prior Art” (“AAPA”) and Kennedy. However, Kennedy fails to disclose at least
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`the following material elements present in all independent claims.
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`In addition, as will be explained in further detail below, Petitioners fail to
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`provide a proper obviousness analysis, neglecting to explain the differences
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`between the prior art and the subject matter of the claims and neglecting to
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`articulate a rationale to combine the references. The Petitioners set forth “Reasons
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`to Combine the References” at pp. 26-28 of the petition, which set forth
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`generalized explanations of the similar technical fields of the references and
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`conclusory statements about how “each reference teaches known methods with
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`1 Note that Petitioners only identify three grounds in their table of contents and
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`they have improperly embedded Ground 4 within their arguments for Ground 1.
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`(See Pet. at 44.)
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`known results (Pet. at 26-27), or how “[i]t would have been a simple matter for one
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`of skill to have combined their respective teachings.” (Id. at 27.) However,
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`neither the petition nor the accompanying declaration provides any explanation of
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`how the combination would have been made or why one of skill in the art would
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`have made the particular combination argued for by Petitioners. Indeed, the
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`language in this section is almost word-for-word identical to the “Reasons to
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`Combine the References” section of co-pending IPR2015-01672 (see Petition at
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`24-26 of IPR2015-01672) – even though the petitions are based on different art.
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`The superficial and conclusory nature of the Petitioners’ obviousness position
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`warrants denial of the Petition.
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`The Petitioners do not correct this problem in their discussion of the
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`individual claim elements. On the contrary, the petition never identifies when an
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`element is missing from a particular reference – i.e., the petition never explains the
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`differences between the claimed invention and the asserted prior art, as this Board
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`has required. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402,
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`slip op. at 13 (PTAB October 21, 2015) (Paper 18) (“without Petitioner having
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`identified specifically the differences, [the Board is] unable to evaluate properly
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`any rationale offered by Petitioner for modifying… [one reference] in view... [of
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`another reference]”). And when they hint that the element might be missing (for
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`example, in their discussion of element 1(c) at pp. 31-32), they include a one-
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`sentence statement that “[o]ne of skill in the art would have been motivated to
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`utilize whichever standard” to provide various improvements. But they never
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`explain how the modifications would be made or why one of skill in the art would
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`have changed Kennedy.
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`In sum, Petitioners have not met their burden to demonstrate a reasonable
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`likelihood of success and the petition for inter partes review should be denied.
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`A. Kennedy Fails to Disclose Material Elements Present in All
`Independent Claims