Filed on behalf of TRACBEAM, LLC
`By: Sean Luner
`
`DOVEL & LUNER
`
`201 Santa Monica Blvd, Suite 600
`
`Santa Monica, CA 90401
`
`Telephone (310) 656-7066
`
`sean@dovel.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`
`
`APPLE, INC,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner
`__________________
`
`Case No. IPR2015-01697
`Patent 7,525,484
`__________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,525,484 UNDER
`35 U.S.C. § 313 PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`

`
`Case No. IPR2015-01697
`Patent 7,525,484
`Patent Owner’s Preliminary Response
`
`
`
`
`Table of Contents
`
`Petitioner’s burden. .......................................................................................... 1
`I.
`II. Ground 1. ......................................................................................................... 6
`
`A. Petitioner’s discussion. .......................................................................... 6
`B. Petitioner’s claim charts. ....................................................................... 8
`C.
`Petitioner’s obviousness assertions. ....................................................15
`III. Ground 2. .......................................................................................................18
`A. Petitioner’s discussion. ........................................................................18
`B. Petitioner’s claim charts. .....................................................................19
`
`IV. Ground 3. .......................................................................................................24
`A. Petitioner’s discussion. ........................................................................24
`B. Petitioner’s claim charts. .....................................................................25
`C. Petitioner’s obviousness assertions. ....................................................31
`V. Ground 4. .......................................................................................................32
`A. Petitioner’s discussion. ........................................................................32
`
`B. Petitioner’s claim charts. .....................................................................33
`VI. Ground 5. .......................................................................................................35
`VII. Conclusion .....................................................................................................36
`
`
`
`
`
`i
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`

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`Case No. IPR2015-01697
`Patent 7,525,484
`Patent Owner’s Preliminary Response
`
`
`Table of Authorities
`
`Cases
`
`Apple Inc. v. ContentGuard Holdings,
`IPR2015-00440, Paper 11 (July 13, 2015) ............................................................. 1
`
`Billy Goat Industries, Inc., v. Schiller Grounds Care, Inc.,
`IPR2014-00742, Paper 8 (November 7, 2014) ....................................................... 5
`
`CallCopy, Inc. v. Verint Americas, Inc.,
`IPR2013-00492, Paper 14 (Feb. 5, 2014) ..................................................... passim
`
`Christie Medical Holdings, Inc. v. The Research Foundation of The City College of
`New York,
`IPR2015-00213, Paper 19 (September 18, 2015) ............................................4, 22
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12 (August 29, 2014) .............................................. passim
`
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper 12 (July 31, 2013) ...........................................................15
`
`Kloster Speedsteel AB v. Crucible, Inc.,
`793 F.2d 1565 (Fed. Cir. 1986) .............................................................................. 3
`
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................16
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`CBM2012-00003, Paper 8 (Oct. 25, 2012) ............................................................ 5
`
`Samsung Electronics Co. et al v. Black Hills Media, LLC,
`IPR2014-00737, Paper 7 (November 4, 2014) .....................................................16
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper 16 (Feb. 22, 2013) ............................................ 2, 5, 17, 18
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2013-00152 Paper 8 (August 19, 2013) .......................................................... 3
`
`Whole Space Industries Ltd. v. Zipshade Industrial (B.V.I.) Corp.,
`IPR2015-00488, Paper 14 (July 24, 2015) ............................................ 4, 5, 12, 22
`
`Wowza Media Systems, LLC and Coffee Cup Partners, Inc. v. Adobe Systems, Inc.,
`IPR2013-00054, Paper 16 (July 13, 2013) ............................................................. 2
`
`
`
`ii
`
`

`
`Case No. IPR2015-01697
`Patent 7,525,484
`Patent Owner’s Preliminary Response
`
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................16
`
`35 U.S.C. § 312 ................................................................................................ passim
`
`
`
`Regulations
`
`37 C.F.R. § 42.104 ........................................................................................... passim
`
`37 C.F.R. § 42.22 ............................................................................................. passim
`
`
`
`
`
`iii
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`

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`Case No. IPR2015-01697
`Patent 7,525,484
`Patent Owner’s Preliminary Response
`
`
`Exhibit List
`
`Description
`
`
`
`
`
`Exhibit No.
`
`none
`
`none
`
`
`
`iv
`
`

`
`Case No. IPR2015-01697
`Patent 7,525,484
`
`
`In this Petition for Inter Partes Review, Petitioner asserts five grounds
`
`challenging, collectively, claims 25, 26, 27, 31, 36, 37, 38, 39, 40, 45, 49, 50, 51,
`
`56, 57, 60, 61, 63, and 72 of the ‘484 Patent. For each ground, Petitioner fails to
`
`demonstrate that each element of the challenged claims is found in or rendered
`
`obvious by the asserted combinations. The Petitioner therefore fails to satisfy its
`
`burden of demonstrating that the challenged claims are unpatentable.
`
`
`
`Petitioner’s burden.
`
`I.
`
`
`The controlling statute requires that a petition for inter partes review
`
`“identif[y]…with particularity…the evidence that supports the grounds for the
`
`challenge to each claim.” 35 U.S.C. § 312(a)(3)1; Apple Inc. v. ContentGuard
`
`Holdings, IPR2015-00440, Paper 11, 5-6 (July 13, 2015) (“a petition for inter
`
`partes review must ‘identif[y], in writing and with particularity, each claim
`
`challenged, the grounds on which the challenge to each claim is based, and the
`
`evidence that supports the grounds for the challenge to each claim.”) (quoting 35
`
`U.S.C. § 312(a)(3)).
`
`The corresponding regulation requires that a petition include a “detailed
`
`explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2);
`
`
`1 Emphasis added unless otherwise noted.
`
`1
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`Case No. IPR2015-01697
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`
`Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper 16 at 14
`
`(February 22, 2013) (“Per 37 C.F.R. § 42.22(a), each petition must include … a
`
`detailed explanation of the significance of the evidence.”).
`
`To satisfy these requirements, a petition must, for each challenged claim,
`
`“identify… [h]ow the construed claim is unpatentable” (37 C.F.R. § 42.104(b)(4))
`
`and “specify where each element of the claim is found in the prior art patents or
`
`printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). “[F]ailure to point out
`
`where each element is found in the prior art is a deficiency in the substantive
`
`requirements of the petition,” which warrants denial under Section 42.104(b)(4).
`
`Wowza Media Systems, LLC and Coffee Cup Partners, Inc. v. Adobe Systems, Inc.,
`
`IPR2013-00054, Paper 16 at 3 (July 13, 2013).
`
`In addition, a Petition must, for each challenged claim, also identify: “the
`
`relevance of the evidence to the challenge raised, including identifying specific
`
`portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “In
`
`accordance with 37 C.F.R. § 104(b)(5), the relevance of the evidence supporting
`
`the challenge must be provided including identification of specific portions of the
`
`evidence that support the challenge.” Synopsys, Inc. v. Mentor Graphics Corp.,
`
`IPR2012-00041, Paper 16 at 12, 14 (February 22, 2013) (finding that “Petitioner’s
`
`conclusory statements, without more detail, fail to satisfy” 37 C.F.R. §§
`
`42.104(b)(4) and 42.104(b)(5), among other requirements).
`
`2
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`Case No. IPR2015-01697
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`
`Based on the controlling statute and regulations set forth above, to satisfy its
`
`burden, a petition must:
`
`(1) address “each element” of each challenged claim (37 C.F.R. §§
`
`42.104(b)(4))—if a ground fails to address even a single claim
`
`element, the Petition must be denied as to that ground. See Universal
`
`Remote Control, Inc. v. Universal Electronics, Inc., IPR2013-00152
`
`Paper 8 at 17 (August 19, 2013) (“‘[A]bsence from the reference of
`
`any claimed element negates anticipation.’ Kloster Speedsteel AB v.
`
`Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986) (citation
`
`omitted), overruled on other grounds by Knorr-Bremse Systeme Fuer
`
`Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004).
`
`Petitioner has failed to identify any disclosure … that meets all the
`
`requirements of claim 1.”).
`
` (2) provide a “detailed explanation of the significance of the evidence”
`
`(37 C.F.R. § 42.22(a)(2) and “the relevance of the evidence” (37
`
`C.F.R. § 42.104(b)(5)) rather than conclusory assertions as to how
`
`each element is found in the reference. Cisco Systems, Inc. v. C-
`
`Cation Technologies, LLC, IPR2014-00454, Paper 12 at 11 (August
`
`29, 2014) (“The Petition before us does not… include a detailed
`
`explanation of the significance of the quotations and citations from the
`
`3
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`Case No. IPR2015-01697
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`applied references.”) (citing 37 C.F.R. §§ 42.104(b)(4)), 42.22(a)(2));
`
`Christie Medical Holdings, Inc. v. The Research Foundation of The
`
`City College of New York, IPR2015-00213, Paper 19 at 7 (September
`
`18, 2015) (“We found Petitioner’s argument conclusory, lacking
`
`sufficient explanation for how the cited evidence… support the
`
`anticipation of the challenged claims.”). “As explained in the Office
`
`Patent Trial Practice Guide, parties requesting inter partes review
`
`should ‘….focus on concise, well-organized, easy-to-follow
`
`arguments supported by readily identifiable evidence of record.’”
`
`Whole Space Industries Ltd. v. Zipshade Industrial (B.V.I.) Corp.,
`
`IPR2015-00488, Paper 14 at 9 (July 24, 2015) (quoting 77 Fed. Reg.
`
`48,756, 48,763 (Aug. 14, 2012)).
`
`(3) point “with particularity” (35 U.S.C. § 312(a)(3)) to specific language
`
`in the reference that anticipates each element—a petition must
`
`“identify[] specific portions of the evidence” (37 C.F.R. §
`
`42.104(b)(5)) rather than block cite multiple paragraphs or pages from
`
`a reference. “Because the petition does not clearly point to specific
`
`language in [a reference] that anticipates each element of [the
`
`challenged claims], we decline to institute an inter partes review on
`
`4
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`Case No. IPR2015-01697
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`the basis of anticipation by [the reference].” Synopsys, Inc. v. Mentor
`
`Graphics Corp., IPR2012-00041, Paper 16 at 16 (Feb. 22, 2013).
`
`A Petition should be denied if the Petition forces the Patent Owner and the
`
`Board to piece together the evidence to attempt to establish Petitioner’s ground:
`
`It is Petitioner’s responsibility to explain specific evidence that
`
`supports its arguments, not the Board’s responsibility to search the
`
`record and piece together what may support Petitioner’s arguments.
`
`Billy Goat Industries, Inc., v. Schiller Grounds Care, Inc., IPR2014-00742, Paper 8
`
`at 28 n. 4 (November 7, 2014).
`
`[W]e will address only the basis, rationale, and reasoning put forth by
`
`the Petitioner in the petition, and resolve all vagueness and ambiguity
`
`in Petitioner’s arguments against the Petitioner.
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-
`
`00003, Paper 8 at 10 (Oct. 25, 2012).
`
`The Petition improperly shifts the burden of deciphering Petitioner’s
`
`arguments onto Patent Owner and the Board, which, as we discussed
`
`above, is contrary to the statutory and regulatory provisions governing
`
`inter partes review proceedings, as well as the best practices outlined
`
`in the Office Patent Trial Practice Guide.
`
`Whole Space Industries Ltd. v. Zipshade Industrial (B.V.I.) Corp., IPR2015-00488,
`
`Paper 14 at 18 (July 24, 2015) (citing 35 U.S.C. § 312(a)(3); 37 C.F.R. §§
`
`42.22(a)(2), 42.104(b)(4)–(5)).
`
`5
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`Case No. IPR2015-01697
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`
`* * *
`
`Petitioner purports to provide “a discussion of how the claims are
`
`unpatentable under the grounds raised (pre-AIA), including claims charts
`
`specifying where each element of a challenged claim is met by the prior art.” Pet.
`
`13 (citing 37 C.F.R. § 42.104(b)(4)). Neither Petitioner’s discussion nor its claim
`
`charts satisfy Petitioner’s burden. Moreover, Petitioner’s obviousness assertions
`
`also fail to satisfy its burden.
`
`Each ground is addressed in turn.
`
`
`
`II. Ground 1.
`
`In Ground 1, Petitioner asserts that claims 25, 26, 27, 31, 36, 37, 39, 40, 49,
`
`51, 56, 57, 60, 61, and 72 are obvious based on Bruno. Pet. 13. Petitioner’s
`
`discussion, claim charts, and obviousness assertions all fail to satisfy Petitioner’s
`
`burden. Each is addressed in turn.
`
`A. Petitioner’s discussion.
`
`Petitioner first provides a brief summary of Bruno. Pet. 13-14. Following
`
`the summary, Petitioner’s discussion of Ground 1 consists of two paragraphs.
`
`Each paragraph is addressed in turn.
`
`Paragraph 1: The first sentence of this paragraph is a conclusion that
`
`“Petitioner believes that Bruno discloses all elements” of the challenged claims.
`
`6
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`Case No. IPR2015-01697
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`
`Petitioner’s belief does not satisfy Petitioner’s burden to “specify where each
`
`element of the claim is found in the prior art.” 37 C.F.R. § 42.104(b)(4).
`
`The second sentence is a conclusion contradicting the first sentence.
`
`Petitioner asserts that “in view of the extremely lengthy claim limitations that set
`
`forth techniques that are well known in the art, Petitioner relies on obviousness...
`
`for all claims, as Bruno does not explicitly disclose every specific detail” of the
`
`claims. Pet. 15. Petitioner then provides an example from claim 39 of an element
`
`that is not disclosed in Bruno—“signal transmission to the first mobile station from
`
`non-terrestrial transmitters above and not supported on the Earth’s surface.” Pet.
`
`15.
`
`Asserting that a reference does not “explicitly disclose every specific detail”
`
`of the claims and providing an example of such nondisclosure in the case of a
`
`claim limitation from one of the fifteen challenged claims does not satisfy
`
`Petitioner’s burden to “specify where each element of the claim is found in the
`
`prior art.” 37 C.F.R. § 42.104(b)(4).
`
`Paragraph 2: In the second paragraph, Petitioner asserts that three of the
`
`challenged claims—claims 27, 31, and 36—“would have been obvious in view of
`
`Bruno standing alone.” Pet. 15. These obviousness assertions do not satisfy
`
`Petitioner’s burden to “specify where each element of the claim is found in the
`
`prior art.” 37 C.F.R. § 42.104(b)(4).
`
`7
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`

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`Case No. IPR2015-01697
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`B. Petitioner’s claim charts.
`
`Petitioner’s claim charts also fail to “specify where each element of the
`
`claim is found in the prior art.” 37 C.F.R. § 42.104(b)(4). The charts (a) fail to
`
`address the majority of claim elements and (b) fail to explain where the claim
`
`limitations that Petitioner purports to address are found in the references.
`
`The following demonstrates how Petitioner fails to satisfy its burden for one
`
`exemplary element of each challenged independent claim—claims 25, 27, 49, and
`
`51
`
`Claim 25: For the following element of claim 25, Petitioner provides:
`
`Pet. 16-17. Petitioner’s chart fails to satisfy Petitioner’s burden.
`
`Petitioner ignores claim elements—at least the claim elements highlighted in
`
`red in the chart reproduced above. For example, claim 25 requires:
`
`
`
`8
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`

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`Case No. IPR2015-01697
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`
`“initiating a plurality of requests for information related to the location
`
`of said mobile station M… such that when said location evaluators are
`
`supplied with corresponding input data having values obtained….”
`
`Petitioner does not address any “request” and therefore does not address any
`
`“requests for information,” “requests provided to each of at least two mobile
`
`station location evaluators,” “first of the requests provided to a first of the location
`
`evaluators,” or “a second of the requests, different from the first request.” And the
`
`Petition does not address any “corresponding input data.” Accordingly, “[t]he
`
`Petition before us does not…specify sufficiently where each element of [claim 25]
`
`is found in the applied references.” Cisco Systems, Inc. v. C-Cation Technologies,
`
`LLC, IPR2014-00454, Paper 12 at 11 (August 29, 2014) (citing 37 C.F.R. §§
`
`42.104(b)(4) and 42.22(a)(2)).
`
`Claim 27: For the following element of claim 27, Petitioner provides:
`
`Pet. 19. Petitioner’s chart fails to satisfy Petitioner’s burden.
`
`Petitioner ignores claim elements (highlighted in red in the chart above).
`
`Claim 27 starts with “determining…location data.” Rather than addressing
`
`
`
`9
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`

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`Case No. IPR2015-01697
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`
`“determining,” Petitioner’s chart addresses “outputting location information.”
`
`Petitioner makes no attempt to support its implied premise that “determining” is
`
`the same thing as “outputting.”
`
`Moreover, Petitioner fails to address the remaining claim language—the
`
`concepts of “first output criteria,” “first request,” and “representation identifying a
`
`first geographical location of the first location” are not mentioned in the single
`
`sentence that appears in Petitioner’s chart, nor does Petitioner provide any
`
`explanation of how its string of citations to Bruno tie to any of these claim
`
`limitations.
`
`Accordingly, “[t]he Petition before us does not…specify sufficiently where
`
`each element of [claim 27] is found in the applied references.” Cisco Systems, Inc.
`
`v. C-Cation Technologies, LLC, IPR2014-00454 Paper 12 at 11 (August 29, 2014)
`
`(citing 37 C.F.R. §§ 42.104(b)(4) and 42.22(a)(2)).
`
`Claim 49: For element (a) of claim 49, Petitioner provides:
`
`Pet. 22. Petitioner’s chart fails to satisfy Petitioner’s burden.
`
`10
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`Case No. IPR2015-01697
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`Petitioner’s “See above” does not address any language in this 60-word
`
`claim element and does not satisfy Petitioner’s burden.
`
`First, Petitioner does not even identify where “above” Petitioner contends
`
`these elements are addressed. Petitioner is presumably referring to prior elements
`
`of claim 49, but fails to specify which prior elements have analysis that shows the
`
`entire element above is disclosed in Bruno. This deficiency is compounded by the
`
`fact that Petitioner uses either “See above” and “See below” (without specifying
`
`where above or below) for the majority of claim elements of claim 49:
`
`Pet. 22-23. Petitioner’s use of “See above” and “See below” improperly shifts the
`
`burden to the Board and Patent Owner to attempt to decipher Petitioner’s
`
`
`
`contentions:
`
`11
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`

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`Case No. IPR2015-01697
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`
`The Petition improperly shifts the burden of deciphering Petitioner’s
`
`arguments onto Patent Owner and the Board, which, as we discussed
`
`above, is contrary to the statutory and regulatory provisions governing
`
`inter partes review proceedings, as well as the best practices outlined
`
`in the Office Patent Trial Practice Guide.
`
`Whole Space Industries Ltd. v. Zipshade Industrial (B.V.I.) Corp., IPR2015-00488
`
`Paper 14 at 18 (July 24, 2015) (citing 35 U.S.C. § 312(a)(3); 37 C.F.R. §§
`
`42.22(a)(2), 42.104(b)(4)–(5)).
`
`Second, Petitioner does not—in its analysis “above”—address element (a) in
`
`claim 49. For example, claim element (a) includes the following language:
`
`requiring a prior likely geographical location approximation generated
`
`by said second location estimator for locating the second mobile
`
`station at substantially the location LA at substantially the time TA
`
`Pet. 22; ‘484, 179:18-21. This claim language does not appear in the prior claim
`
`elements and, as a result, Petitioner never addresses this claim language “above.”
`
`Thus, “[t]he Petition before us does not …specify sufficiently where each element
`
`of [claim 20] is found in the applied references.” Cisco Systems, Inc. v. C-Cation
`
`Technologies, LLC, IPR2014-00454, Paper 12 at 11 (August 29, 2014) (citing 37
`
`C.F.R. §§ 42.104(b)(4) and 42.22(a)(2)). Accordingly, Petitioner fails to “specify
`
`where each element of the claim is found in the prior art.” 37 C.F.R. §
`
`42.104(b)(4).
`
`12
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`

`
`Claim 51: For the following element of claim 51, Petitioner provides:
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`Case No. IPR2015-01697
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`
`
`Pet. 24. Petitioner’s chart fails to satisfy Petitioner’s burden.
`
`Petitioner does not reference Bruno as support for the assertion in its chart.
`
`Instead, Petitioner again inserts “See above” without specifying where above it
`
`contends this element is addressed.
`
`Petitioner then asserts: “(estimates provided by multiple techniques using
`
`paths A, B, and C are consecutive).” Pet. 24. Petitioner provides no insight as to
`
`what “paths” Petitioner is referencing—there are no “paths” addressed “above.” A
`
`word search demonstrates that there is no other reference to “paths” above or
`
`anywhere else in the entire Petition. In addition, “A, B, and C” only appear in this
`
`portion of Petitioner’s chart. Patent Owner cannot decipher how Petitioner
`
`contends this element is disclosed in Bruno from Petitioner’s chart. Accordingly,
`
`“[t]he Petition before us does not…specify sufficiently where each element of the
`
`claims is found in the applied references.” Cisco Systems, Inc. v. C-Cation
`
`Technologies, LLC, IPR2014-00454, Paper 12 at 11 (August 29, 2014) (citing 37
`
`C.F.R. §§ 42.104(b)(4) and 42.22(a)(2)).
`
`13
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`Case No. IPR2015-01697
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`Dependent claims: Because Petitioner fails to carry its burden on each
`
`challenged independent claim, Petitioner fails to carry its burden on the challenged
`
`dependent claims. See, e.g., CallCopy, Inc. v. Verint Americas, Inc., IPR2013-
`
`00492, Paper 14 at 7 (Feb. 5, 2014) (“Because the grounds asserted against the
`
`dependent claims suffer from the defects of the grounds asserted against the
`
`independent claims, [the Board] need[ed] to address only the grounds asserted
`
`against independent claims.”).
`
`Moreover, Petitioner’s charts for each dependent claim include additional
`
`defects. Claim 39 is an illustrative example. For claim 39, Petitioners provides:
`
`Pet. 21. Petitioner’s chart fails to satisfy Petitioner’s burden.
`
`Petitioner ignores claim elements—at least those highlighted in red in the
`
`chart above. For example, Petition’s chart does not address or identify what in
`
`
`
`14
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`Case No. IPR2015-01697
`Patent 7,525,484
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`Bruno it contends constitutes “obtaining” or “receiving a first location estimate.”
`
`Nor does Petitioner’s chart explain how the string of citations it provides supports
`
`its assertion or corresponds to the claim elements. Accordingly, “[t]he Petition
`
`before us does not…specify sufficiently where each element of [claim 39] is found
`
`in the applied references.” Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`
`IPR2014-00454 Paper 12 at 11 (August 29, 2015) (citing 37 C.F.R. §§
`
`42.104(b)(4) and 42.22(a)(2)).
`
`C. Petitioner’s obviousness assertions.
`
`Petitioner’s Ground 1 also fails because Petitioner fails to satisfy its burden
`
`with respect to obviousness.
`
`In Ground 1, Petitioner asserts that the challenged claims are obvious based
`
`on Bruno. Pet. 13. If a petitioner asserts a ground based on obviousness, it is
`
`“Petitioner’s burden to demonstrate how the prior art would have made obvious the
`
`claimed subject matter as a whole.” Heart Failure Technologies, LLC v.
`
`Cardiokinetix, Inc., IPR2013-00183, Paper 12 at 10 (July 31, 2013).
`
`To satisfy this burden, a petitioner must:
`
`(a) meaningfully address the scope and content of the prior art and any
`
`differences between the claimed subject matter and the prior art: “the
`
`Petition does not address meaningfully the scope and content of the prior
`
`art, and any differences between the claimed subject matter and the prior
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`15
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`art.” Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-
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`00454, Paper 12 at 13 (August 29, 2014).
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` (b) provide sufficient articulated reasoning with rational underpinning
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`explaining why one with ordinary skill in the art would modify or
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`combine the teachings of the applied references to address those
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`differences–instead of relying on conclusory statements:
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` “An analysis under 35 U.S.C. § 103 (a) is objective and includes an
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`explicit analysis requiring more than ‘mere conclusory statements;
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`instead, there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.’”
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`Samsung Electronics Co. et al v. Black Hills Media, LLC, IPR2014-
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`00737, Paper 7at 21-22 (November 4, 2014) (quoting KSR Int’l v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007)).
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` “The Petition merely provides conclusory statements to support the
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`assertions of obviousness.” Cisco Systems, Inc. v. C-Cation
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`Technologies, LLC, IPR2014-00454, Paper 12 at 13-14, (August 29,
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`2014).
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` “Petitioner’s conclusory statements, without more detail, fail to satisfy
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`any of the above-noted requirements and are irreparably lacking in
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`detail. Petitioner does not clearly provide analysis to support the
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`assertion of obviousness.” Synopsys, Inc. v. Mentor Graphics Corp.,
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`IPR2012-00041, Paper 16 at 14 (Feb. 22, 2013) (finding that
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`“Petitioner’s conclusory statements, without more detail, fail to
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`satisfy” 37 C.F.R. §§ 42.104 (b)(4) and 42.104 (b)(5), among other
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`requirements).
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`Petitioner’s entire obviousness analysis, consisting of two paragraphs on
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`pages 15 and 16 of the Petition, fails to satisfy this burden.
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`First, Petitioner fails to identify the actual differences between the claimed
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`subject matter and the prior art. “[T]he Petition does not address meaningfully the
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`scope and content of the prior art, and any differences between the claimed subject
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`matter and the prior art.” Cisco Systems, Inc. v. C-Cation Technologies, LLC,
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`IPR2014-00454, Paper 12 at 13 (August 29, 2014). Petitioner’s chart suggests that
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`every element is actually disclosed in Bruno (even if Petitioner simply inserts “See
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`above” or “See below” in its chart). As a result, the Board (and the Patent Owner)
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`cannot discern which claim elements Petitioner contends are actually disclosed in
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`Bruno and which are “obvious in view of Bruno standing alone.” Pet. 15.
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`Second, Petitioner’s obviousness analysis only addresses only a fraction of
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`the challenged claims—4 of the 15 claims (claims 39, 27, 31, and 36).
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`Accordingly, Petitioner provides zero obviousness analysis for the remaining
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`challenged claims: 25, 26, 37, 40, 49, 51, 56, 57, 60, 61, and 72.
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`Third, Petitioner’s entire obviousness analysis as to claim 39 consists of the
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`following conclusory sentence:
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`“One of ordinary skill in the art would have recognized that the
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`recitations are directed to commonly known techniques.”
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`Pet. 15. This conclusory sentence, which fails to even identify the “commonly
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`known techniques,” fails to satisfy Petitioner’s burden. “Petitioner’s conclusory
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`statements, without more detail, fail to satisfy any of the above-noted requirements
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`and are irreparably lacking in detail. Petitioner does not clearly provide analysis to
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`support the assertion of obviousness.” Synopsys, Inc. v. Mentor Graphics Corp.,
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`IPR2012-00041, Paper 16 at 14 (Feb. 22, 2013).
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`
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`III. Ground 2.
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`In Ground 2, Petitioner asserts that claims 38, 45, 50, and 63 are obvious
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`based on Bruno in view of LeBlanc. Pet. 26. Petitioner’s discussion and claim
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`charts fail to satisfy Petitioner’s burden. Each is addressed in turn.
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`A. Petitioner’s discussion.
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`Petitioner’s entire discussion of Ground 2 consists of two paragraphs. Pet.
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`26-27. Neither paragraph satisfies Petitioner’s burden.
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`The first paragraph summarizes LeBlanc and does not address any claim
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`elements. It does not “specify where each element of the claim is found in the
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`prior art” as required. 37 C.F.R. § 42.104(b)(4).
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`The second paragraph concludes that it would have been obvious to combine
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`LeBlanc with the invention of Bruno. Pet. 27. This paragraph does not address
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`any claim element and therefore does not “specify where each element of the claim
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`is found in the prior art” as required. 37 C.F.R. § 42.104(b)(4).
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`B. Petitioner’s claim charts.
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`Petitioner’s claim charts also fail to “specify where each element of the
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`claim is found in the prior art.” 37 C.F.R. § 42.104(b)(4). The charts (a) fail to
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`address the majority of claim elements and (b) fail to explain how where the claim
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`limitations that Petitioner purports to address are found in the references.
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`The following are examples of how Petitioner fails to satisfy its burden for
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`an exemplary element of each challenged independent claim—claim 45, 57, and
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`63.
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`Claim 45: For the following element of claim 45, Petitioner provides:
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`Pet. 28-29. Petitioner’s chart fails to satisfy Petitioner’s burden.
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`Petitioner ignores multiple claim elements—at least those highlighted in red
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`in the chart above. For example, claim 45 requires:
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` “repeatedly performing the following steps”—Petitioner fails to
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`identify any steps, much less repeating them; and
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` “each of the location techniques providing an instance of location
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`information for a location of the mobile station”—Petitioner fails to
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`identify such “instance of location information.”
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`Accordingly, “[t]he Petition before us does not…specify sufficiently where each
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`element of [claim 45] is found in the applied references.” Cisco Systems, Inc. v.
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`C-Cation Technologies, LLC, IPR2014-00454, Paper 12 at 11 (August 29, 20145)
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`(citing 37 C.F.R. §§ 42.104(b)(4) and 42.22(a)(2)).
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`Claim 57: For the following elements of claim 57, Petitioner provides:
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`Pet. 31.
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`Pet. 30. Petitioner’s chart fails to satisfy Petitioner’s burden.
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`For the first element presented above, Petitioner ignores the claim elements
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`(highlighted in red in the chart above). Rather than providing the required detailed
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`analysis, the Petition simply provides a conclusory statement: “LeBlanc discloses
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`contours on a map.” Petitioner does not address the claim language or explain
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`how, according to Petitioner, contours on a map constitute “data indicative of one
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`of: an error and a likelihood of the mobile station being at a location represented
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`by said resulting location information.” “We found Petitioner’s argument
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`conclusory, lacking sufficient explanation for how the cited evidence…support the
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`anticipation of the challenged claims.” Christie Medical Holdings v. The Research
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`Foundation, IPR2015-00213, Paper 19 at 7 (September 18, 2015).
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`For the second element above, Petitioner’s “See above”, without identifying
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`any specific part of the Petition, improperly shifts the burden to the Board and
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`Patent Owner to decipher Petitioner’s contentions:
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`The Petition improperly shifts the burden of deciphering Petitioner’s
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`arguments onto Patent Owner and the Board, which, as we discussed
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`above, is contrary to the statut