Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`
`
`Paper No. ________
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`SIERRA WIRELESS AMERICA, INC.; SIERRA WIRELESS, INC.;
`and RPX CORP.,
`Petitioners,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`
`
`
`Case IPR2015-01823
`Patent 8,648,717
`_______________
`
`
`
`
`
`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
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 1
`
`III. CLAIM CONSTRUCTION ............................................................................ 2
`
`A.
`
`B.
`
`Identity Module ..................................................................................... 2
`
`Programming Transmitter ..................................................................... 3
`
`IV. STANDARD FOR INSTITUTING INTER PARTES REVIEW ..................... 3
`
`V. ALL GROUNDS SHOULD BE DENIED BECAUSE THEY
`PRESENT THE SAME ART AND ARGUMENT PREVIOUSLY
`CONSIDERED BY THE OFFICE .................................................................. 4
`
`A. Whitley Was Considered During Prosecution ...................................... 5
`
`B.
`
`C.
`
`D.
`
`Digital Cellular Telecommunications System (Phase 2+);
`Specification of the Subscriber Identity Module – Mobile
`Equipment (SIM-ME) Interface (GSM 11.11 version 7.4.0
`Release 1998) Was Considered During Prosecution ............................ 5
`
`The Petitioners Make No Attempt to Overcome the
`Presumption of Administrative Correctness ......................................... 5
`
`Petitioners Add Nothing More than What Is Already in the
`Record with Respect to Whitley and SIM+ME Spec ........................... 8
`
`VI. THE PETITION IS NOT PROPERLY SUPPORTED BY THE
`NEGUS DECLARATION .............................................................................. 9
`
`VII. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`DEMONSTRATE A REASONABLE LIKELIHOOD OF SUCCESS ........10
`
`A.
`
`Petitioners’ Obviousness Analysis Is Inadequate ...............................11
`
`1.
`
`The Petitioners failed to articulate the differences
`between the claimed invention and the prior art .......................11
`
`i
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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.
`
`The Petitioners improperly combine and conflate their
`arguments for Grounds 1 and 2 .................................................13
`
`3.
`
`4.
`
`The Petitioners have not shown the content of the
`“Admitted Prior Art” or demonstrated that it is prior art .........14
`
`The Petitioners have not provided an adequate rationale
`to combine the references .........................................................15
`
`B. Whitley in View of the SIM+ME Spec and the Admitted Prior
`Art Fail Either to Disclose All Elements in the Independent
`Claims or to Render Those Claims Obvious as Alleged in
`Grounds 1 and 2 ..................................................................................15
`
`1.
`
`2.
`
`3.
`
`“a programmable interface for establishing a
`communication link with at least one monitored technical
`device wherein the programmable interface is
`programmable by wireless packet switched data
`messages” (element (b)); ...........................................................17
`
`“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 the
`one or more stored telephone numbers or IP addresses
`being numbers to which the programmable
`communicator device is configured to and permitted to
`send outgoing wireless transmissions” (element (d)); ..............23
`
`“wherein the programmable communicator device is
`configured to process data received through the
`programmable interface from the at least one monitored
`technical device in response to programming instructions
`received in an incoming wireless packet switched data
`message.” (element (g)) ............................................................35
`
`ii
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`4. Whitley and the SIM+ME Spec do not disclose all of the
`elements of claim 24. ................................................................38
`
`5. Whitley and the SIM+ME Spec do not disclose all of the
`elements of claim 29. ................................................................39
`
`C. Whitley Fails to Disclose Material Elements Present in
`Dependent Claims 2, 7, 10, 14, and 30 ...............................................40
`
`1.
`
`2.
`
`3.
`
`4.
`
`“A programmable communicator device according to
`claim 1, wherein the processing module is configured to
`process data received through the programmable
`interface from the at least one monitored technical device
`in response to programming instructions received in an
`incoming wireless packet switched data message.”
`(Claim 2) ...................................................................................40
`
`“A programmable communicator device according to
`claim 6, wherein the processing module is configured to
`cause the processed data to be transmitted to the at least
`one monitoring device in response to programming
`instructions received in an incoming wireless packet
`switched data message.” (Claim 7) ...........................................42
`
`“A programmable communicator device according to
`claim 1 further configured to determine whether the
`processed received data indicates a change in status of
`the at least one monitored technical device that crosses a
`threshold parameter, or that otherwise indicates an alarm
`condition in response to programming instructions
`received in an incoming wireless packet switched data
`message.” (Claim 10) ................................................................43
`
`“A programmable communicator device according to
`claim 13, wherein the processing module is configured to
`cause the received data to be transmitted to the at least
`one monitoring device in response to programming
`instructions received in an incoming wireless packet
`switched data message.” (Claim 14) .........................................45
`
`iii
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`
`5.
`
`“A programmable communicator device according to
`claim 29 wherein the processing module processes
`received data to determine whether it indicates a change
`in status of the at least one monitored technical device
`that crosses a threshold parameter, or that otherwise
`indicates an alarm condition.” (Claim 30) ................................46
`
`D.
`
`The Petitioners Provide No Analysis for Their Ground 3
`Obviousness Argument to Combine Whitley, the SIM+ME
`Spec, and Kail ......................................................................................47
`
`1.
`
`“A programmable communicator device according to
`claim 1 further comprising a location processing module
`configured to determine an at least one location of the
`programmable communicator device, and wherein the
`programmable communicator device is configured to
`respond to an at least one transmission initiated by an at
`least one monitoring device requesting that said location
`data be sent to the monitoring device in response to
`programming instructions received in an incoming
`wireless packet switched data message.” (Claim 16) ...............47
`
`“A programmable communicator device according to
`claim 16 wherein the location processing module
`comprises a Global Positioning System (GPS) module.”
`(Claim 17) .................................................................................48
`
`2.
`
`“A programmable communicator device according to
`claim 1 wherein the monitored technical device is a
`health monitoring system.” (Claim 19) .....................................49
`
`“A programmable communicator device according to
`claim 19 wherein the programmable communicator
`device is configured to receive data from the health
`monitoring system through the programmable interface
`representing at least one of body temperature, blood
`pressure, periodic or continuous electrocardiogram health
`rhythm, blood glucose concentration, blood electrolyte
`concentration, kidney function, liver function, and labor
`contractions in response to programming instructions
`
`iv
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`

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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`received in an incoming wireless packet switched data
`message.” (Claim 20) ................................................................50
`
`E.
`
`The Petitioners Provide No Analysis for Their Ground 4
`Obviousness Argument to Combine Whitley, the SIM+ME
`Spec, and Eldredge ..............................................................................52
`
`VIII. CONCLUSION ..............................................................................................53
`
`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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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00449, (PTAB July 15, 2015) ............................................................. 10
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454 (PTAB Aug. 29, 2014) ............................................................. 10
`
`Graham v. John Deere Co.
`383 U.S. 1 (1966) ................................................................................................ 11
`
`Heart Failure Technologies, LLC v. CardioKinetix, Inc.,
`IPR2013-00183, (PTAB July 31, 2013) ............................................................. 15
`
`Integrated Global Concepts, Inc. v. Advanced Messaging
`Technologies, Inc.,
`IPR2014-01027, (PTAB December 22, 2014) ..................................................... 9
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01402, (PTAB October 21, 2015). ................................................ 11, 12
`
`Karim v. Jobson,
`Interference No. 105,376, (B.P.A.I. Feb. 28, 2007) ............................................ 6
`
`
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, (PTAB September 23, 2014) ...........................21, 34, 35, 49, 51
`
`KSR Int’l Co. v Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 11
`
`Luminara Worldwide, LLC v. Shenzhen Liown Electronics Co. LTD,
`IPR2015-01183, (PTAB November 5, 2015) ...................... 12, 21, 34, 49, 51, 52
`
`Parsons v. United States,
`670 F.2d 164 (Ct. Cl. 1982) .................................................................................. 6
`
`vi
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`In re Portola Packaging, Inc.,
`110 F.3d 786 (Fed. Cir. 1997) .............................................................................. 6
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) ............................................................................ 6
`
`Praxair Distribution, Inc. v. Ino Therapeutics, LLC.,
`IPR2015-00893, (PTAB September 22, 2015) ..................................................... 8
`
`Prism Pharma Co., LTD v. Choongwae Pharma Corp.,
`IPR2014-00315, (PTAB July 8, 2014) ................................................................. 8
`
`Sanders v. United States Postal Service,
`801 F.2d 1328 (Fed. Cir. 1986) ............................................................................ 6
`
`Shire, LLC v. Amneal Pharms., LLC,
`802 F.3d 1301 (Fed. Cir. 2015) ........................................................................ 7, 8
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 10
`
`35 U.S.C. § 312(a)(3) ..................................................................................... 3, 13, 20
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ................................................................................................. 3, 4
`
`35 U.S.C. § 325(d) ................................................................................................. 8, 9
`
`Other Authorities
`
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 10
`
`37 C.F.R. § 42.104(b) ........................................................................................ 13, 20
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`vii
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
`
`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 Sierra Wireless America
`
`Inc., Sierra Wireless Inc. and RPX Corp. (collectively, “Petitioners”) for inter
`
`partes review of claims 1-3, 5-7, 10-24, and 29-30 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 September 11, 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
`
`in a relatively autonomous fashion by communicating with or through a wireless
`
`module that is embedded in or otherwise linked to that second machine. For
`
`example, machine-to-machine applications are prevalent in the fields of automated
`
`meter reading, asset tracking and fleet management, automotive telematics,
`
`commercial and residential security systems, wireless telemedicine and healthcare
`
`1
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`devices, industrial automation and controls, remote information displays and
`
`digital signage, and the remote control of certain consumer devices and appliances,
`
`point of sale payment systems, vending machines, kiosks, and ATM and banking
`
`machines.
`
`III. CLAIM CONSTRUCTION
`Petitioners propose construction for four terms. Of those four terms, M2M
`
`agrees that the plain and ordinary meaning is correct for “a programmable
`
`interface” and “coded number,” so there is no need for the Board to construe those
`
`terms. M2M disagrees with the proposed constructions for the terms below.
`
`Identity Module
`
`A.
`M2M disagrees with Petitioners’ proposition that the claimed “identity
`
`module” can be used for storing a “coded number” (i.e., “or the coded number”) as
`
`an alternative to storing a “unique identifier.” (Petition for Inter Partes Review
`
`(“Pet.”) at 16.) As the express language of claim element 1(e) recites, the “identity
`
`module” must be used for “storing a unique identifier that is unique to the
`
`programmable communicator device.” The term “coded number” is broader and
`
`need not always be the “unique identifier” that is explicitly required by the claim
`
`language.
`
`Therefore, Petitioners’ proposed construction of identity module should be
`
`rejected.
`
`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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`Programming Transmitter
`
`B.
`Petitioners’ proposed construction is overly restrictive and incorrect. (Pet. at
`
`16.) Petitioners offer no reason why a “programming transmitter” would need to
`
`be limited to being only a mobile phone or IP device, or a reason why it would
`
`have to engage in “remote” programming of the programmable communicator. On
`
`the contrary, the ’717 patent teaches that the programmable communicator can be
`
`locally programmed by Bluetooth or infrared transmissions which would not need
`
`to be originated by a mobile phone or IP device. (Ex. 1001, ’717 patent at 4:31-
`
`37.)
`
`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
`
`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
`
`obligation under § 312(a)(3) to identify “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.” Thus, it is not for the Board
`
`to fill in gaps omitted by the Petitioners.
`
`3
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`Equally important is § 314(a)’s requirement that the Board’s determination
`
`take into account “information presented in . . . any response filed under section
`
`313.” In other words, the Board’s determination must be based on the totality of
`
`the written evidence presented at the pre-trial stage.
`
`Ultimately, the focus of the inquiry under § 314(a) is whether the Petitioners
`
`“would prevail”—i.e., win on the merits based exclusively on the “information
`
`presented in the petition . . . and any response.” 35 U.S.C. § 314(a).
`
`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. ALL GROUNDS SHOULD BE DENIED BECAUSE THEY PRESENT
`THE SAME ART AND ARGUMENT PREVIOUSLY CONSIDERED
`BY THE OFFICE
`
`The art relied on for Grounds 1-4 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
`
`made no attempt to demonstrate that they could overcome this presumption, and
`
`the petition should be denied on that basis alone.
`
`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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`
`A. Whitley Was Considered During Prosecution
`Whitley (Ex. 1003), relied on for Grounds 1-4 was presented to and
`
`considered by the examiner during prosecution. (Ex. 1002 at 123.) It is shown on
`
`the face of the ’717 patent under “References Cited.” (Ex. 1001, p. 2.)
`
`B. Digital Cellular Telecommunications System (Phase 2+);
`Specification of the Subscriber Identity Module – Mobile
`Equipment (SIM-ME) Interface (GSM 11.11 version 7.4.0 Release
`1998) Was Considered During Prosecution
`
`The reference described in the petition as “Digital cellular
`
`telecommunications system (Phase 2+); Specification of the Subscriber Identity
`
`Module – Mobile Equipment (SIM-ME) Interface (GSM 11.11 version 7.4.0
`
`Release 1998)” (the “SIM+ME Spec” (Ex. 1004)), relied on for Grounds 1-4 was
`
`also presented to and considered by the examiner during prosecution. (Ex. 1002 at
`
`127.) It is shown on the face of the ’717 patent under “References Cited.” (Ex.
`
`1001, p. 3.)
`
`C. The Petitioners Make No Attempt to Overcome the Presumption
`of Administrative Correctness
`
`Because the examiner properly considered and fully evaluated Whitley and
`
`the SIM+ME Spec, 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.
`
`5
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`For decades, the Supreme Court, the Federal Circuit, and its predecessor the
`
`Court of Claims have repeatedly applied 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 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 correct
`
`and taken in good faith.” Sanders v. United States Postal Service, 801 F.2d 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
`
`6
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`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., LLC, 802 F.3d 1301, 1307
`
`(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 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, Whitley and the SIM+ME Spec appear
`
`on the face of the patent. These references were presented to and considered by
`
`the examiner during prosecution. (Ex. 1002 at 123, 127.) Based on the well-settled
`
`presumption that the examiner did his job and the unrebutted presumption of
`
`administrative correctness, the examiner fully evaluated each reference.
`
`7
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`The Petitioners made no attempt to demonstrate that they could overcome
`
`the “added burden of overcoming the deference that is due to a qualified
`
`government agency presumed to have properly done its job.” Shire, 802 F.3d
`
`1301, 1307 (emphasis added). Petitioners should not be permitted to consume the
`
`resources of both M2M and the Board to retread ground already covered by the
`
`PTO. Because the art was previously considered and the Petitioners made no
`
`attempt to overcome their added burden, the Board should deny institution of inter
`
`partes review.
`
`D.
`
`Petitioners Add Nothing More than What Is Already in the
`Record with Respect to Whitley and SIM+ME Spec
`
`The Board has previously exercised its discretion under 35 U.S.C. § 325(d)
`
`to deny a petition where art and arguments were previously submitted to and
`
`considered by the Examiner during prosecution. E.g., Prism Pharma Co., LTD v.
`
`Choongwae Pharma Corp., IPR2014-00315, slip op. at 2 (PTAB July 8, 2014)
`
`(Paper 14) (informative decision).
`
`This case is not like Praxair, where the petition included “additional
`
`evidence not considered by the examiner.” Praxair Distribution, Inc. v. Ino
`
`Therapeutics, LLC., IPR2015-00893, slip op. at 9 (PTAB September 22, 2015)
`
`(Paper 14). Here, Petitioners and their expert do not supplement the underlying
`
`record with respect to Whitley and the SIM+ME Spec. Thus, while Petitioners
`
`8
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`provide an expert declaration in support of its arguments in Grounds 1-4, the
`
`declaration “does not present any persuasive evidence to supplement the record
`
`that was in front of the Office.” Integrated Global Concepts, Inc. v. Advanced
`
`Messaging Technologies, Inc., IPR2014-01027, slip op. at 7 (PTAB December 22,
`
`2014) (Paper 16).
`
`The record is clear: Whitley and the SIM+ME Spec were previously
`
`presented to the PTO and by offering these references again, without any
`
`additional information not previously presented, Petitioners violate 35 U.S.C. §
`
`325(d), and the Board should deny this petition for inter partes review on that
`
`basis.
`
`VI. THE PETITION IS NOT PROPERLY SUPPORTED BY THE NEGUS
`DECLARATION
`
`The petition is accompanied by the declaration of Dr. Kevin Negus (the
`
`“Negus Declaration”). (Ex. 1013.) Curiously, however, though the declaration
`
`runs some 114 paragraphs, the petition cites to only 20 paragraphs from the
`
`declaration: ¶¶ 48, 52, 56-57, 61, 77-87, 96-97, 107, and 110. Instead of properly
`
`citing to the Negus Declaration, most of the petition merely relies on attorney
`
`argument. The Negus Declaration is not cited at all to support the Petitioners’
`
`obviousness arguments regarding independent claims 24 and 29 or dependent
`
`9
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`Patent Owner’s Preliminary Response
`Inter Partes Review of U.S. Patent No. 8,648,717
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`claims 2-3, 5-7, 10-15, 18, 22-23, and 30. Because the petition is unsupported by
`
`expert testimony, the Board should deny the petition on that basis alone.
`
`In addition, the Board should not permit the Petitioners to rely on those
`
`portions of the Negus Declaration they failed to cite. For example, the Negus
`
`Declaration contains over 40 pages of claim charts that are not cited or referred to
`
`in the petition. If the Petitioners had cited those claim charts, they would have
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`violated the Board’s rules against incorporation by reference. 37 C.F.R. §
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`42.6(a)(3) (“Arguments must not be incorporated by reference from one document
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`into another document.”); Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-
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`00454, slip op. at 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative).
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`“Arguments and information that are not presented and developed in the Petition,
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`and instead are incorporated by reference to the [expert] Declaration, are not
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`entitled to consideration.” Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-
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`00449, slip op. at 10 (PTAB July 15, 2015) (Paper 10). Because the Petitioners
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`could not have had the material considered if they had actually cited to it, they
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`certainly should not be entitled to consideration of material they failed to cite.
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`VII. 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.
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`Each ground relies on what Petitioners’ refer to as Whitley (Ex. 1003) and the
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`SIM+ME Spec (Ex. 2004). However, Whitley and/or the SIM+ME Spec fail to
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`disclose the elements present in all independent claims.
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`Petitioners’ Obviousness Analysis Is Inadequate
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`A.
`The Petitioners’ obviousness analysis is inadequate and unsupported.
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`1.
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`The Petitioners failed to articulate the differences between
`the claimed invention and the prior art
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`Obviousness is resolved on the bases of underlying factual determinations
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`including: (1) the scope and content of the prior art, (2) any differences between
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`the claimed subject matter and the prior art, (3) the level of skill in the art, and (4)
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`secondary considerations. Graham v. John Deere Co.383 U.S. 1, 17-18 (1966).
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`Furthermore, there must be “some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v
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`Teleflex Inc., 550 U.S. 398, 418 (2007).
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`The Board has previously rejected petitions that failed to explicitly set out
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`the differences between the prior art and the claimed invention, stating that
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`“without Petitioner having identified specifically the differences, [the Board is]
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`unable to evaluate properly any rationale offered by Petitioner for modifying…
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`[one reference] in view.. [of another reference]” Johns Manville Corp. v. Knauf
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`Insulation, Inc., IPR2015-01402, slip op. at 13 (PTAB October 21, 2015 (citing
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`SAP America Inc. v. Clouding IP, LLC, IPR2014-00299 (PTAB July 9, 2014)).
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`“The responsibility falls on a petitioner and in this case Petitioner did not explicitly
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`identify any difference. Therefore, Petitioner has not sustained its burden of
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`showing a reasonable likelihood of success.” Johns Manville Corp, IPR2015-
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`01402, slip op. at 13 (Paper 18). See also Luminara Worldwide, LLC v. Shenzhen
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`Liown Electronics Co. LTD, IPR2015-01183, slip op. at 16-17 (PTAB November
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`5, 2015) (Paper 8) (Where “Petitioner’s analysis does not explain how any
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`particular combination of features could be made” or provide “meaningful []
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`discussion showing how the prior art renders obvious any particular claim,” the
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`requisite comparison of the prior art is obscured, thus petitioner has failed to meet
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`its burden of showing a reasonable likelihood of success).
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`In Petitioners’ arguments for Grounds 1-4 in which Whitley and the
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`SIM+ME Spec are offered as references, the petition is silent as to what
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`differences there are between the subject matter of any of the claims and either
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`Whitley and/or the SIM+ME Spec. (Pet. at 17-56.) By failing to discuss the
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`differences between either reference and the elements of the claims, the Petitioners
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`have not “sustained [their] burden of showing a reasonable likelihood of success.”
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`Johns Manville Corp, IPR2015-01402, slip op. at. 13 (Paper 18). Petitioners have
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`failed to make their arguments accessible to the Board, and, for that reason, the
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`petition for inter partes review should be denied.
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`2.
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`The Petitioners improperly combine and conflate their
`arguments for Grounds 1 and 2
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`In addition to failing to distinguish the prior art from the claimed invention,
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`the petition is also defective because it improperly combines the arguments for
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`Grounds 1 and 2 without explaining which arguments or positions apply to which
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`proposed grounds.
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`The petition sets forth four grounds for unpatentability. Grounds 1 and 2 are
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`both directed to the same set of claims (1-3, 5-7, 10-15, 18, 22-24 and 29-30) and
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`both rely on Whitley in view of SIM+ME Spec. (Pet. at 6.) Grounds 1 and 2 differ
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`only in that Ground 2 adds the “Admitted Prior Art” as a further basis for the
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`Petitioners’ obviousness position. (Id.)
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`However, the petition itself never separately discusses Grounds 1 and 2.
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`Instead, the petition discusses claims 1-3, 5-7, 10-15, 18, 22-24 and 29-30 in one
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`section – Section V.A. on pages 17-51 – wi