CoxCom LLC (Petitioner)
`v.
`Joao Control & Monitoring Systems, LLC (Patent Owner)
`
`Case IPR2015-01760 / U.S. Patent No. 6,549,130
`Case IPR2015-01762 / U.S. Patent No. 7,397,363
`
`Petitioner’s Demonstratives
`
`Thursday, November 17, 2016
`
`1:00 PM, Courtroom A
`
`Petitioner’s Demonstratives - 1
`Petitioner’s Demonstratives - 1
`
`
`v.
`Joao Control & Monitoring Systems, LLC (Patent Owner)
`
`Case IPR2015-01760 / U.S. Patent No. 6,549,130
`Case IPR2015-01762 / U.S. Patent No. 7,397,363
`
`Petitioner’s Demonstratives
`
`Thursday, November 17, 2016
`
`1:00 PM, Courtroom A
`
`Petitioner’s Demonstratives - 1
`Petitioner’s Demonstratives - 1
`
`
`
`Instituted Grounds of Unpatentability
`
`Claims – ‘130 Patent
`
`Prior Art
`
`1, 8, 12, 17, 98, 145 and 149
`
`Koether (§ 103)
`
`10, 119 and 124
`
`Koether + Crater
`
`Claims – ‘363 Patent
`
`Prior Art
`
`1, 3, 4, 5, 8, 13, 14, 15, 16, 17, 20,
`*44, 84, 85, and 86
`
`Koether + Crater
`
`* Depends from independent claim 42 which will be addressed
`
`IPR2015-01760, Institution Decision, Paper 8, at 17.
`IPR2015-01762, Institution Decision, Paper 8, at 15.
`
`Petitioner’s Demonstratives - 2
`
`
`
`Koether and Crater Qualify
`as Prior Art to the
`‘130 and ‘363 Patents
`
`Petitioner’s Demonstratives - 3
`
`
`
`Only Disputed Issue:
`
`Are the Challenged Claims of the ‘130 and ‘363
`Patents entitled to a filing date prior to
`July 18, 1996?
`
`Petitioner: July 18, 1996 priority date
`Patent Owner: March 27,1996 priority date
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 7.
`
` Patent Owner’s Response, Paper 14, at 13.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 8.
`
` Patent Owner’s Response, Paper 14, at 13.
`
`Petitioner’s Demonstratives - 4
`
`
`
`Patent Owner’s Burden – No Presumption
`
`There is no presumption that the Challenged Claims
`of the ‘130 and ‘363 Patents are entitled to a filing
`date prior to July 18, 1996.
`
`“When neither the PTO nor the Board has previously
`considered priority, there is simply no reason to
`presume that claims in a CIP application are entitled
`to the effective filing date of an earlier filed
`application.”
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008)
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 8.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 8.
`
`Petitioner’s Demonstratives - 5
`
`
`
`Patent Owner’s Burden - Priority
`
`The burden rests with Patent Owner to “come forward
`with evidence to prove entitlement to claim priority to
`an earlier filing date.”
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305-1306 (Fed. Cir. 2008)
`
`“When a dispute arises concerning whether a CIP
`patent is entitled to priority to the date of the original
`application and the Patent Office has not addressed
`the issue, the burden of proof ordinarily should rest
`with the party claiming priority to the date of the
`original application.”
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1303 (Fed. Cir. 2008)
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 7.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 8.
`
`Petitioner’s Demonstratives - 6
`
`
`
`Patent Owner’s Burden – Written Description
`
`Patent owner must show there is written description
`support for Challenged Claims of ‘130 and ‘363
`patents in March 1996 application.
`
`“To satisfy the written description requirement the
`disclosure of the prior application must ‘convey with
`reasonable clarity to those skilled in the art that, as of
`the filing date sought, [the inventor] was in
`possession of the invention.’”
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008)
`
`“[T]he subject matter must be disclosed to establish
`possession.”
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1310 (Fed. Cir. 2008)
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 8-9.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 9-10.
`
`Petitioner’s Demonstratives - 7
`
`
`
`Patent Owner Fails to Meet its Burden
`
`Patent Owner fails to meet its Burden that the
`Challenged Claims of the ‘130 and ‘363 Patent are
`entitled to a March 1996 Priority Date
`
`Why?
`• Patent Owner provides NO EVIDENCE that the
`Challenged Claims meet Written Description
`Requirement
` No Expert Declaration
` Nothing to establish perspective of a Phosita
` Only provides Attorney argument
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 8.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 9.
`
`Petitioner’s Demonstratives - 8
`
`
`
`Species Does Not Support Genus
`
`Case Name
`
`Genus
`
`Species
`
`Tronzo v. Biomet, Inc., 156 F.3d
`1154 (Fed. Cir. 1998)
`
`
`All Cup Shapes
`
`Conical shaped cups
`
`Anascape, Ltd. v. Nintendo of
`America Inc., 601 F.3d 1333 (Fed.
`Cir. 2010)
`
`A Controller having multiple input
`members operable in 6 degrees
`of freedom
`
`In re Curtis, 354 F.3d 1347 (Fed.
`Cir. 2004)
`
`Friction enhancing coatings
`applied to polytetrafluoroethylene
`floss
`
`A Controller having single
`input members operable in
`6 degrees of freedom
`
`
`Use of microcrystalline
`wax as adhered to
`polytetrafluoroethylene
`floss
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 14.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 14-15.
`
`Petitioner’s Demonstratives - 9
`
`
`
`Species Does Not Support Genus
`
`Patent Owner’s Response, Paper 14, at 20.
`March 1996 Application, Ex. 1004, at 96.
`
`Petitioner’s Demonstratives - 10
`
`
`
`Species Does Not Support Genus
`
`Species of “Premises” potentially supported:
`
`*
`
`* These citations relate to content in the July 1996 Application.
`
`Preliminary Remarks of Applicant in ‘010 patent, Ex. 1019, at 3. (Ex. 2002, at 4.)
`Originally filed specification of ‘010 patent, Ex. 1018 at 20-358.
`See also Preliminary Remarks of Applicant in ‘363 patent, Ex. 1018, at 7-8. (Ex. 2003, at 8-9.)
`See also Originally filed specification of ‘363 patent, Ex. 1019 at 16-363.
`Petitioner’s Demonstratives - 11
`
`
`
`Species Does Not Support Genus
`
`Species of “Premises” clearly unsupported:
`
`Preliminary Remarks of Applicant in ‘010 patent, Ex. 1019, at 3. (Ex. 2002, at 4.)
`Originally filed specification of ‘010 patent, Ex. 1018 at 20-358.
`See also Preliminary Remarks of Applicant in ‘363 patent, Ex. 1018, at 7-8. (Ex. 2003, at 8-9.)
`See also Originally filed specification of ‘363 patent, Ex. 1019 at 16-363.
`
`Petitioner’s Demonstratives - 12
`
`
`
`Specification Does Not Support “Premises”
`
`A single mention of “home security system” in the
`March 1996 application
`• Not sufficient disclosure for the entire functionality
`and structure of the “premises” system of the
`challenged claims
`• Not sufficient to convey the patentee was in
`possession of the claimed “premises” system
`• Not commensurate with the scope of “premises”
`defined by patentee.
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 9-10.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 10-11.
`
`Petitioner’s Demonstratives - 13
`
`
`
`Specification Does Not Support “Premises”
`
`A single mention that a vehicle based system can “find
`application” in a “home security system” is not sufficient to
`disclose and enable:
`• Control functions of the claims, such as activating, de-
`activating, disabling and re-enabling a premises [system,
`device, equipment, equipment system, appliance]
`
`Vehicle, home, boat
`
`≠
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 20, 13.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 11, 13-14.
`
`Petitioner’s Demonstratives - 14
`
`
`
`Specification Does Not Support “Premises”
`
`A single mention that a vehicle based system can “find
`application” in a “home security system” does not encompass, for
`example, the following control functions that occur to a
`“premises”:
`o Disabling an assembly line
`o Activating a mobile building system
`o Disabling a drilling rig
`o Re-enabling an edifice
`o Activating a parcel of land system
`
`
`
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 20, 13.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 11, 13-14.
`
`Petitioner’s Demonstratives - 15
`
`
`
`Specification Does Not Support “Premises”
`
`March 1996 Application is directed to motor vehicles:
`
`March 1996 Application, Ex. 1004 at 2, 4
`
`Petitioner’s Demonstratives - 16
`
`
`
`“Premise” System Not Disclosed in Mar. 1996
`
`“[T]he written description is ‘not a question of whether one skilled in the art might
`be able to construct the patentee’s device from the teachings of the disclosure. .
`. .Rather, it is a question whether the application necessarily discloses that
`particular device.’”
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008)
`
`“Obviousness simply is not enough; The subject matter must be disclosed to
`establish possession.”
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1310 (Fed. Cir. 2008)
`
`Ex. 1016, at 52:10-53:11
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 13-14.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 13-15.
`
`Petitioner’s Demonstratives - 17
`
`
`
`Specification Does Not Support “Premises”
`
`Specification of the March 1996 Application:
`• Provides NO support for “premises”
`• The term “premises” appears nowhere in the
`specification of the March 1996 Application
`
`Specification of the July 1996 Application:
`• Recites the term “premises” over 500 times
`• Adds at least two Figures and over 9 columns of
`disclosure strictly directed to “premises” subject
`matter.
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 9-10.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 10-11.
`March 1996 Application, Ex. 1004.
`Additional Excepts of 130 Patent (July 1996 Application Specification), Ex. 1017 at, 89-273.
`
`Petitioner’s Demonstratives - 18
`
`
`
`Figures Do Not Support “Premises”
`
`Patent Owner admits that Figure 11B and its accompanying
`disclosure is limited to a vehicle not a premises
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 12.
`
` Patent Owner’s Response, Paper 14, at 19.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 13.
`
` Patent Owner’s Response, Paper 14, at 19.
`
`Petitioner’s Demonstratives - 19
`
`
`
`File History Does Not Support “Premises”
`
`Patentees Definition of “Premises” in Remarks
`• Patent Owner solely relied on these Remarks to advance its
`claim construction of “Premises”
`• Forms the basis for the Board’s Construction of “Premises”
`
`Remarks provide NO written description support for “premises” in
`the March 1996 Application
`• None of the citations are to the March 1996 Application
`• All citations are to portions of the July 1996 Application
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 11-12.
`
` Preliminary Response of Patent Owner, Paper 7, at 20-21.
`
` Institution Decision, Paper 8, at 7.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 11-12.
`
` Preliminary Response of Patent Owner, Paper 7, at 20-21.
`
` Institution Decision, Paper 8, at 9.
`
`Petitioner’s Demonstratives - 20
`
`
`
`File History Does Not Support “Premises”
`
`Patentees Claim Amendments During Prosecution
`
`• Patentee ONLY cites to portion of the July 1996 Application for
`written description support
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 11-12.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 11-12.
`Additional Excepts of 130 Patent (July 1996 Application Specification), Ex. 1017 at, 35, 76, 234.
`
`Petitioner’s Demonstratives - 21
`
`
`
`File History Does Not Support “Premises”
`
`Patentees Claim Amendments During Prosecution
`
`• Patentee ONLY cites to portion of the July 1996 Application for
`written description support
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 11-12.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 11-12.
`Additional Excepts of 130 Patent (July 1996 Application Specification), Ex. 1017 at, 37, 77, 242, 254.
`
`Petitioner’s Demonstratives - 22
`
`
`
`Patent Owner Admission – “Premises”
`
`Patent Owner Response
`• Requests a modification of the interpretation of
`the term “premises” and ONLY cites to
`portions of the ‘130 patent (Cols. 2:62-3:06)
`that FIRST appear in the July 1996 Application
`
`
`
`Additional Excepts of 130 Patent (July 1996 Application Specification), Ex. 1017 at, 111.
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 12.
`
` Patent Owner’s Response, Paper 14, at 47-48.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 12.
`
` Patent Owner’s Response in ‘130 Patent, Ex. 1021, at 47-48.
`
`Petitioner’s Demonstratives - 23
`
`
`
`‘130 Patent
`
`Koether Renders Obvious
`Independent Claims
`1, 98, and 145
`
`Petitioner’s Demonstratives - 24
`
`
`
`‘130 – Instituted Grounds of Unpatentability
`
`Claims – ‘130 Patent
`
`Prior Art
`
`1, 8, 12, 17, 98, 145 and 149
`
`Koether (§ 103)
`
`10, 119 and 124
`
`Koether + Crater
`
`IPR2015-01760, Institution Decision, Paper 8, at 17.
`
`Petitioner’s Demonstratives - 25
`
`
`
`‘130 - Claim 1
`
`“First Control Device”
`
`“First Signal”
`
`“Second Signal”
`
`“Second Control Device”
`
`“Third Signal”
`
`“Third Control Device”
`
`Petitioner’s Demonstratives - 26
`
`
`
`Koether Renders Obvious the Independent Claims
`
`“Third Control Device” (claim 145)
`“First Control Device” (claims 1, 98)
`• Microprocessor Controller of
`Appliance
`
`“Second Control Device”
`•
`Base station
`
`“First Control Device” (claim 145)
`“Third Control Device” (claims 1, 98)
`•
`Control center
`
`Koether, Ex. 1008, Figure 1.
`Petition, Paper 1, at 14-26, 34-37.
`
`Petitioner’s Demonstratives - 27
`
`
`
`Koether Renders Obvious the Independent Claims
`
`“Third Signal” (claim 145)
`“First Signal” (claims 1, 98)
`
`“Second Signal”
`
`“First Signal” (claim 145)
`“Third Signal” (claim 1, 98)
`
`Koether, Ex. 1008, Figure 2.
`Petition, Paper 1, at 14-26, 34-37.
`
`Petitioner’s Demonstratives - 28
`
`
`
`Disputed Issues:
`
`1. Should the construction of “premises” be interpreted to
`remove “a portion…of or in the building or structure”?
`
`2. Is the “second control device”
`“located at a location
`remote from the premises”?
`
`Patent Owner’s Response, Paper 14, at 44-51.
`
`Petitioner’s Demonstratives - 29
`
`
`
`Issue (1) – Construction of Premises
`
`Patent Owner’s Argument is Contradictory
`
`Preliminary Response, Paper 7, at 20.
`
`Preliminary Response, Paper 7, at 20-21.
`
`Petitioner’s Reply, Paper 16, at 3-4.
`
`Petitioner’s Demonstratives - 30
`
`
`
`Issue (1) – Construction of Premises
`
`Patent Owner’s Argument is Contradictory
`
`Patent Owner’s Response, Paper 14, at 11.
`
`Institution Decision, Paper 8, at 12.
`
`
`Petitioner’s Reply, Paper 16, at 3-4.
`
`Petitioner’s Demonstratives - 31
`
`
`
`Issue (2) – Remote “Second control device”
`
`Koether Renders Obvious the Independent Claims
`
`Koether, Ex. 1008, 4:30-36.
`Petitioner’s Reply, Paper 16, at 5.
`
`Petitioner’s Demonstratives - 32
`
`
`
`Issue (2) – Remote “Second control device”
`
`Institution Decision:
`
`Institution Decision, Paper 8, at 13.
`
`Unrebutted Expert Testimony:
`
`Deposition of Petitioner’s Declarant, Ex. 1016 at 81:20-23.
`
`Petitioner’s Reply, Paper 16, at 5.
`
`Petitioner’s Demonstratives - 33
`
`
`
`Issue (2) – Remote “Second control device”
`
`Koether Renders Independent Claims Obvious
`Under Patent Owner’s Claim Construction
`
`Construction of
`“Premises”
`
`“A building or a structure and the
`grounds or parcel of land
`associated with the building or
`the structure, or a building or
`structure or a portion, room, or
`office, of or in the building or
`structure, or a home, mobile
`home, mobile building, mobile
`structure, residence, residential
`building, office, commercial
`building, commercial office,
`structure, equipment, facility,
`machine, rig, assembly line, or
`edifice”
`
`Response
`
`• Each Kitchen (40) appliance
`of Koether, such as “ovens,
`and cooling systems, such
`as refrigerators and HVAC
`systems” is separately a
`piece of equipment or a
`machine
`
`
`• Each Kitchen appliance is a
`separate premises remote
`from the base station
`
`
`
`Patent Owner’s Response, Paper 14 at 44-51
`Petitioner’s Reply, Paper 16, at 4-6.
`
`Petitioner’s Demonstratives - 34
`
`
`
`‘130 Patent
`
`Koether + Crater Renders
`Obvious Claim 8
`
`Claim 8
`The apparatus of claim 1, wherein the first signal is transmitted
`from the first control device to the at least one of premises system,
`a premises device, a premises equipment, a premises equipment
`system, and a premises appliance, via a wireless device.”
`
`Ex. 1001, at 76:51-55.
`
`Petitioner’s Demonstratives - 35
`
`
`
`Koether Renders Obvious Claim 8
`
`Koether, Ex. 1008 at 4:25-35
`
`Koether, Ex. 1008 at Figure 2
`
`Petitioner’s Reply, Paper 16, at 6-7.
`Petition, Paper 1, at 26.
`
`Petitioner’s Demonstratives - 36
`
`
`
`Patent Owner’s Arguments Fail
`
`Patent Owner’s Rebuttal:
`
`Patent Owner’s Response, Paper 14, at 52-53.
`
`Petitioner’s Demonstratives - 37
`
`
`
`Petitioner’s Unrebutted Expert Testimony
`
`Why Patent Owner is Incorrect:
`
`Deposition of Petitioner’s Declarant, Ex. 1016 at 111:9-19.
`Petitioner’s Reply, Paper 16, at 6.
`
`Petitioner’s Demonstratives - 38
`
`
`
`Koether Renders Obvious Claim 8
`
`Koether encourages the use of wireless
`communication:
`
`Koether, Ex. 1008 at 4:25-35
`
`Petitioner’s Reply, Paper 16, at 6-7.
`Petition, Paper 1, at 26.
`
`Koether, Ex. 1008 at Figure 2
`
`Petitioner’s Demonstratives - 39
`
`
`
`Not Disputed
`
`Patent Owner does not independently
`dispute these dependent claims
`
`Claims – ‘130 Patent
`
`Prior Art
`
`12, 17 and 149
`
`Koether (§ 103)
`
`10, 119 and 124
`
`Koether + Crater
`
`Patent Owner’s Response, Paper 14, at 54.
`
`Petitioner’s Demonstratives - 40
`
`
`
`‘363 Patent
`
`Koether + Crater Renders
`Obvious Independent Claims
`1, (42) and 84
`
`Petitioner’s Demonstratives - 41
`
`
`
`‘363 – Instituted Grounds of Unpatentability
`
`Claims – ‘363 Patent
`
`Prior Art
`
`1, 3, 4, 5, 8, 13, 14, 15, 16, 17, 20,
`*44, 84, 85, and 86
`
`Koether + Crater
`
`* Depends from independent claim 42 which will be addressed
`
`IPR2015-01762, Institution Decision, Paper 8, at 15.
`
`Petitioner’s Demonstratives - 42
`
`
`
`‘363 – Claim 1
`
`“First Processing Device”
`
`“First Signal”
`
`“Second Signal”
`
`Second Processing Device”
`
`“Third Processing Device”
`
`“Third Signal”
`
`Petitioner’s Demonstratives - 43
`
`
`
`Koether + Crater Renders Obvious
`the Independent Claims
`
`“Third Processing Device” (claim 1)
`“First Processing Device” (claims 42, 84)
`• Microprocessor Controller of
`Appliance
`
`“Second Processing Device”
`•
`Base station
`
`“First Processing Device” (claim 1)
`“Communications Device”
`(Third Processing Device)
`(claims 42, 84)
`•
`Control center
`
`Koether, Ex. 1008, Figure 1.
`Petition, Paper 1, at 15-26, 38-48.
`
`Petitioner’s Demonstratives - 44
`
`
`
`Koether + Crater Renders Obvious
`the Independent Claims
`
`“Third Signal” (claim 1)
`“First Signal” (claims 42, 84)
`
`“Second Signal”
`
`“First Signal” (claim 1)
`“Third Signal” (claims 42, 84)
`
`Koether, Ex. 1008, Figure 2.
`Petition, Paper 1, at 15-26, 38-48.
`
`Petitioner’s Demonstratives - 45
`
`
`
`Koether + Crater Render Obvious
`the Independent Claims
`
`“Internet and the
`World Wide Web”
`(Claims 1, 42, 84)
`
`“Associated with a website”
`(Claims 1, *44, 84)
`
`Crater, Ex. 1009 at 6:7-20
`
`Petition, Paper 1, at 38-48.
`
`Crater, Ex. 1009 at Figure 1
`
`Petitioner’s Demonstratives - 46
`
`
`
`Disputed Issues
`
`(1) Is Crater combinable with Koether?
`
`(2) Does Koether+Crater disclose the step of Claim 1 of
`determining whether an action or operation is an authorized
`or allowed action or operation
`
`Patent Owner’s Response, Paper 14, at 44-51.
`
`Petitioner’s Demonstratives - 47
`
`
`
`Issue (1) – Proper Combination
`
`Patent Owner argues that Crater and
`Koether cannot be combined because:
`
`1. Koether’s disclosure of an ISDN network using the X.25 protocol
`teaches away from the use of the Internet or the World Wide Web.
`
`Petitioner’s Reply, Paper 21, at 8-10, 12.
`
`Petitioner’s Demonstratives - 48
`
`
`
`Issue (1) – Proper Combination
`
`Patent Owner’s Argument Fails
`
`1. Koether is not limited to an ISDN network that uses the X.25
`protocol. Koether discloses ISDN networks.
`
`Institution Decision, Paper 8, at 10
`
`Koether, Ex. 1008 at 5:42-45
`
`Petitioner’s Reply, Paper 15, at 2.
`
`Petitioner’s Demonstratives - 49
`
`
`
`Issue (1) – Proper Combination
`
`ISDN networks transmit data over the Internet
`
`“Another increasingly attractive method of accessing the
`Internet is Integrated Services Digital Network.”
`
`Morgan Stanley Internet Report, Ex. 2008 at 26
`
`“Dial-up lines, on the other hand, are more frequently
`used by small corporations or individuals to connect
`small networks or individual computers to the Internet
`using modems and ISDN connections.”
`Morgan Stanley Internet Report, Ex. 2008 at 26
`
`Petitioner’s Reply, Paper 15, at 3.
`
`Petitioner’s Demonstratives - 50
`
`
`
`Issue (1) – Proper Combination
`
`Patent Owner’s Argument Still Fails
`
`1. Prior to the purported invention, ISDN networks used the
`Internet and X.25.
`
`“This document also specifies the Internet encapsulation for
`protocols, including IP, on the packet mode of the ISDN. It applies to
`the use of Internet protocols on the ISDN in the circuit mode only
`when the circuit is established as an end-to-end X.25 connection.”
`
`Request for Comments 1356 on Multiprotocol Interconnect on X.25 and ISDN in the
`Packet Mode (August 1992), Ex. 1020 at 1.
`
`Petitioner’s Reply, Paper 15, at 3.
`
`Petitioner’s Demonstratives - 51
`
`
`
`Issue (1) – Proper Combination
`
`Unrebutted Expert Testimony that a Phosita would
`be motivated to combine Koether and Crater:
`
`Deposition of Petitioner’s Declarant, Ex. 1016, at 138:3-10
`
`Petitioner’s Reply, Paper 15, at 5.
`
`Petitioner’s Demonstratives - 52
`
`
`
`Issue (2) – Authorized Action/Operation
`
`Claim 1
`(determining
`step)
`
`“determines whether an action or
`an operation associated with
`information contained in the
`second signal, to at least one of
`[a premise system, device,
`component] . . . is an authorized
`or an allowed action or an
`authorized or an allowed
`operation”
`
`
`Koether + Crater
`
`Crater, Ex. 1009 at 9:3-7
`
`Crater, Ex. 1009 at 8:53-58
`
`Petition, Paper 1, at 40, 45.
`Petitioner’s Reply, Paper 15, at 7-8.
`
`Petitioner’s Demonstratives - 53
`
`
`
`Issue (2) – Authorized Action/Operation
`
`Unrebutted Expert testimony that a password is sufficient to
`disclose determining step:
`
`
`
`Deposition of Petitioner’s Declarant, Ex. 1013, at 25:2-19
`
`Petitioner’s Reply, Paper 15, at 7-8.
`
`Petitioner’s Demonstratives - 54
`
`
`
`‘363 Patent
`
`Koether + Crater Renders
`Obvious Claim 44
`
`Claim 44
`The apparatus of claim 42, wherein the second processing device
`is associated with a web site.
`
`Ex. 1001, at 114:66-67.
`
`Petitioner’s Demonstratives - 55
`
`
`
`Koether + Crater Render Obvious Claim 44
`
`
`“Associated with a website”
`
`Crater, Ex. 1009 at 6:7-20
`
`Petitioner’s Reply, Paper 15, at 22-23.
`Petition, Paper 1, at 53-54.
`
`Crater, Ex. 1009 at Figure 1
`
`Petitioner’s Demonstratives - 56
`
`
`
`Not Disputed
`
`Patent Owner does not independently
`dispute these dependent claims
`
`Claims – ‘363 Patent
`
`Prior Art
`
`3-5, 8, 13-17, 20, 85, and 86
`
`Koether + Crater
`
`Patent Owner’s Response, Paper 14, at 52-53.
`
`Petitioner’s Demonstratives - 57
`
`
`
`The Petition Properly Names All
`Real-Parties-In-Interest
`
`Petitioner’s Demonstratives - 58
`
`
`
`“To challenge that identification of real party in interest
`a patent owner must provide sufficient rebuttal
`evidence to bring reasonably into question the
`accuracy of Petitioner’s identification of RPIs.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012)
`
`“A common focus of the inquiry is . . . whether the
`nonparty exercised or could have exercised control
`over a party’s participation in a proceeding.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,759 (Aug. 14, 2012)
`
`The concept of control means that “the non-party ‘had
`the opportunity to present proofs and argument’. . . or
`‘to direct or control the content’ of the filing.”
`
`JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc., CBM2014-00179, Paper No. 11
`at 10 (PTAB Feb. 20, 2015)
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 17-18.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 18.
`
`Petitioner’s Demonstratives - 59
`
`
`
`The Present IPR is different from the earlier IPRs of
`‘130 (‘1486) and ‘363 (‘1482, ‘1485) Patents
`
`The prior art references, Koether and Crater, relied on
`in the present IPR were neither relied upon nor even at
`issue in the ‘1482,‘1485 and ‘1486 IPRs
`
`The opinions of Petitioner’s Declarant are different than
`those in the ‘1482,‘1485 and ‘1486 IPRs
`
`All strategic planning, preparation and review, including
`identification of prior art, was performed independently
`of Terremark and Time Warner.
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 18-19.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 19-20.
`
`Petitioner’s Demonstratives - 60
`
`
`
`Testimony
`
`Mr. Bennett was separately engaged by Petitioner:
`
`Deposition of Petitioner’s Declarant,
`Ex. 1013, at 46:13-21
`
`Deposition of Petitioner’s Declarant,
`Ex. 1013, at 47:5-13
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 20.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 21.
`
`Petitioner’s Demonstratives - 61
`
`
`
`Testimony
`
`Mr. Bennett did not interact with counsel for Terremark,
`Time-Warner or iControl during the preparation of his
`declaration:
`
`Deposition of Petitioner’s Declarant,
`Ex. 1013, at 46:22-47:2
`
`Deposition of Petitioner’s Declarant,
`Ex. 1013, at 47:14-18
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 20-21.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 21.
`
`Petitioner’s Demonstratives - 62
`
`
`
`Testimony
`
`Deposition of Petitioner’s Declarant,
`Ex. 1013, at 76:16-19
`
`Deposition of Petitioner’s Declarant, Ex.
`1013, at 47:19-48:3
`
`IPR2015-01760, Petitioner’s Reply, Paper 16, at 19-21.
`IPR2015-01762, Petitioner’s Reply, Paper 15, at 20-21.
`
`Petitioner’s Demonstratives - 63
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