UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`___________________
`
`Case IPR2015-01941
`Patent 8,065,156
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`___________________
`
`Case IPR2015-01941
`Patent 8,065,156
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Case IPR2015-01941
`Patent 8,065,156
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`TABLE OF CONTENTS
`
`Introduction .......................................................................................................... 1
`I.
`II. Overview of the ‘156 Patent ................................................................................ 2
`III. Patent Owner’s Response to Petitioner’s Statement of Facts ........................ 17
`A. Petitioner’s Characterization of the Invention................................................ 17
`B. Petitioner’s Characterization of the Prosecution History ............................... 18
`IV. Patent Owner Has Statutorily Disclaimed Claim 10 ...................................... 21
`V. Argument ........................................................................................................... 22
`A. Petitioner Has Failed to Provide Claim Constructions for Several Key Terms,
`Hence the Petition is Fatally Deficient. ................................................................ 22
`B. Petitioner Has Assumed “Broadest Reasonable” Claim Constructions for
`Several Key Terms that are Unreasonable, Hence the Petition is Fatally
`Deficient. ............................................................................................................... 32
`C. Petitioner’s Proposed Reasons for Combining the Teachings of the
`References Rely on Impermissible Hindsight, Hence Petitioner’s Obviousness
`Analysis is Defective. ........................................................................................... 40
`VI. Conclusion ...................................................................................................... 44
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`EXHIBIT LIST
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`Exhibit 2001
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`Ulrich Hackenberg’s biographical information
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`Exhibit 2002
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`Hackenberg explains VW’s new infotainment architecture
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`Exhibit 2003
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`U.S. Patent No. 5,539,775 to Tuttle et al.
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`Exhibit 2004
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`U.S. Patent No. 5,629,981 to Nerlikar
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`Exhibit 2005
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`U.S. Patent No. 8,311,834 to Gazdzinski
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`Exhibit 2006
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`U.S. Patent No. 8,301,456 to Gazdzinski
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`Exhibit 2007
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`Exhibit 2008
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`Exhibit 2009
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`Patent Owner’s July 11, 2011 Amendment and Response to
`Office Action
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`U.S. Patent Application Publication No. 2009/0077100 to
`Hancock et al.
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`Statutory Disclaimer of Claims 10, 18, 20, 21, 23, and 24 of
`U.S. Patent No. 8,065,156 in compliance with 35 U.S.C. §
`253(a)
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`Exhibit 2010
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`IEEE 802.11 from Wikipedia website
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`Exhibit 2011
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`GPRS & EDGE from 3GPP website
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`Exhibit 2012
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`Mobile broadband from Wikipedia website
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`CASES
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`TABLE OF AUTHORITIES
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`Sony Computer Entm’t Am. Inc. v. Dudas,
`2006 WL 1472462 (E.D.Va. 2006) ............................................................... 21
`
`Blackberry Corp. v. MobileMedia Ideas, LLC,
`IPR2013-00036, Paper 65 (Mar. 7, 2014) ..................................................... 22
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ......................................... 23, 26, 39
`
`Power Integrations v. Fairchild Semiconductor,
`711 F.3d 1348 (Fed. Cir. 2013) ..................................................................... 23
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) ........................ 23
`
`In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) ......................................................... 24
`
`Ericsson Inc. et al. v. Intellectual Ventures II LLC,
`IPR2014-01170, Paper 9 (Feb. 17, 2015) ...................................................... 28
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`115 USPQ2d 1105 (Fed. Cir. 2015) (en banc) .............................................. 28
`
`Watts v. XL Systems, Inc., 232 F.3d 877 (Fed. Cir. 2000) ....................................... 28
`
`Personalized Media Communications, LLC v. International Trade Commission,
`161 F. 3d 696 (Fed. Cir. 1998) ................................................................................. 28
`
`Pride Solutions, LLC v. Not Dead Yet Manufacturing, Inc.,
`IPR2013-00627, Paper 14 (Mar. 17, 2014) ................................................... 30
`
`TriMed, Inc. v. Stryker Corp., 514 F.3d 1256 (Fed. Cir. 2008) ............................... 30
`
`In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (en banc) .............................. 30
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009) ............. 31
`
`In re McLaughlin, 443 F.2d 1392 (CCPA 1971) ..................................................... 41
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`Grain Processing Corp. v. American Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ....................................................................... 41
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 42
`
`In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999) ..................................................... 43
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ..................................................................... 43
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`
`
`STATUTES
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`35 U.S.C. § 112, ¶ 6 ................................................................................................. 27
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`35 U.S.C. § 253(a) ................................................................................................... 20
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`35 U.S.C. § 314(a) ................................................................................................... 22
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`
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`RULES AND REGULATIONS
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`37 C.F.R. § 42.104(b)(3) ........................................................................ 22, 28, 30, 31
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`37 C.F.R. § 42.108(c) ............................................................................................... 22
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ........ 22, 31
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`MPEP § 2111 ............................................................................................... 26, 32, 39
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`MPEP § 2143.01 ...................................................................................................... 42
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`MPEP § 2181 ..................................................................................................... 28, 29
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`I.
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`Introduction
`Volkswagen Group Of America, Inc. (“Petitioner”) has filed an inter partes
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`review (“IPR”) petition against U.S. Patent 8,065,156 (the “’156 Patent”) owned
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`by West View Research, LLC (“Patent Owner”). Petitioner has also filed IPR
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`petitions against seven other patents owned by Patent Owner. The other petitions,
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`which involve a computerized information system like the system described in the
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`’156 Patent, were filed in IPR2016-00123 (Patent 8,719,037), IPR2016-00124
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`(Patent 8,706,504), IPR2016-00125 (Patent 8,290,778), IPR2016-00137 (Patent
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`8,682,673), IPR2016-00146 (Patent 8,719,038), IPR2016-00156 (Patent
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`8,296,146), and IPR2016-00177 (Patent 8,781,839).
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`Petitioner challenges the patentability of Claims 10, 11, 15, 18, and 20-24 of
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`the ’156 Patent solely on the basis of obviousness. However, Petitioner fails to
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`propose reasonable interpretations for a number of material claim limitations and
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`fails to set forth a prima facie case of obviousness for any of the challenged claims.
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`Accordingly, Petitioner has failed to meet its burden of showing a “reasonable
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`likelihood” that any challenged claim of the ’156 Patent is unpatentable due to
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`obviousness. Thus, Patent Owner respectfully requests that the Patent Trial and
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`Appeal Board (“Board”) deny the petition and decline to institute IPR of the ’156
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`Patent.
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`II. Overview of the ‘156 Patent
`The ’156 Patent discloses, inter alia,1 an improved computerized
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`information system for adaptively and rapidly providing user-specific and other
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`information to users within a mobile transport apparatus (e.g., a land-mobile
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`shuttle or other such vehicle) within a contracted period of time, including for use
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`on their personnel electronic device or PED, such as e.g., after leaving the vehicle.
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`Ex. 1001 at Abstract, 1:51-60, 10:33-36. Generally, users of such transport
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`vehicles need a means to intuitively (and quickly) converge on information
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`enabling them to, for instance, find an entity (e.g., business) of interest. Id. at 1:61-
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`2:7.
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`Problematically, such users may have neither (i) any pre-existing familiarity
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`of how the information system of the vehicle operates (having never been in the
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`vehicle before); nor (ii) any pre-existing familiarity of where the desired entity is
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`located (including relative to their current location or the transport vehicle itself).
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`Id. at 1:61-67.
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` 1
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` The ’156 Patent is one of twenty-five (25) currently issued U.S. Patents claiming
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`priority from the common 09/330,101 parent application filed on June 10, 1999.
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`Information pertinent to the user’s activities after egress from the vehicle
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`may include e.g., directions to a local restaurant or transportation facility, weather
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`information for their locale, etc. Id. at 1:51-60.
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`Moreover, such users require a degree of individual, repeatable
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`“personalization”, such that their identity (and preselected preferences) can be
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`applied to information they obtain each different time they enter the same (or
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`different) transportation modality. Id. at 3:13, 4:10-13, 12: 1-3, 19:43-20:8. Hence,
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`certain preferences should be applied to that individual user regardless of the
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`particular platform they select for transport (e.g., one of several available elevator
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`cars in a building, a different vehicle they happen to use on a given day, etc.), also
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`known as “platform agnosticism”.
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`FIG. 1 of the ’156 Patent, an annotated version of which is reproduced
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`below, shows one exemplary embodiment of the computerized information system,
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`which includes, inter alia, a central processing unit (e.g., microprocessor), digital
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`graphics co-processor, digital signal processor (DSP) and associated speech
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`processing (digitization/recognition) computer programs, a capacitive touch screen
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`input and display device, an entity database (not shown), a speech synthesis
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`module, a high-speed data interface to e.g., a user portable device or PED, and a
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`high-speed network interface (see e.g., FIG. 3 reproduced and annotated below,
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`showing one embodiment of a wireless interface using an IEEE Std. 802.11 (aka
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`“Wi-Fi”) wireless interface). Id. at 7:51-55.
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`The apparatus of FIG. 1 is an embodiment of a specific architecture
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`optimized for speed, utilizing only then (circa mid-1999) recently available state-
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`of-the-art technologies including use of data compression (e.g., code-excited linear
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`prediction, or CELP) to, inter alia, reduce wireless data bandwidth requirements,
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`Hidden Markov Modeling (HMM)-based speech recognition, at least four digital
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`processors (a DSP, a separate graphics co-processor, a CPU/microprocessor, as
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`well as a microcontroller), direct memory access (DMA) for the CPU which
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`expedites data accesses to/from RAM, a (then) very high-bandwidth wireless
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`interface (i.e., IEEE Std. 802.11) to enable rapid wireless transmission or receipt of
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`large data structures such as image files, and a capacitive touch-screen input and
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`display device with supporting iconic-based software (and pre-grouped topical
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`areas of information) to enable rapid user intuition/assimilation for ease of use. Id.
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`at 2:64-3:4, 6:8-24, 6:36-46, 10:32-36.
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`Patent Owner notes anecdotally in passing that the technology of the ’156
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`Patent is now largely ubiquitous; numerous modern “smartphones”, tablet
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`computers, and in fact vehicles have now (more than 16 years later) whole-sale
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`adopted such an architecture, and specifically the foregoing combination of user
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`interface elements (e.g., icon-based capacitive touch screen and speech input),
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`processing elements, and wireless technologies. Dr. Ulrich Hackenberg,
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`responsible for the technical development of all of Volkswagen Group Brands (of
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`which Petitioner is one)2, recently stated the following:
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`The use of touch screens on smartphone has really been an
`overwhelming success; we will consistently use them in our vehicles
`as well. …Volkswagen is currently working on integration that allows
`the use of safe, familiar controls during driving.
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`Ex. 2002 at 3 (emphasis added).
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` “Since July 1, 2013, he has been a member of the Board of Management of AUDI
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`AG with responsibility for Audi’s Technical Development. In addition, he is also
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`responsible for the technical development of all the Volkswagen Group’s brands.”
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`Ex. 2001 at 2.
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`Interaction by touch is …mainly impressive because it is easy to learn
`and offers direct, immediate interaction with the elements that are
`presented. Moreover, the customer is accustomed to touch controls in
`other areas. At Volkswagen, we are clearly relying on touch as a
`cross-segment, brand-shaping element for the control of information
`and communication systems in our vehicles.
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`Id. at 2 (emphasis added). The reader need only pick up their smartphone and
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`invoke the resident “maps” program via the touchscreen and say “Starbucks” or the
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`like to attest to this ubiquity.
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`FIG. 15 of the ’156 Patent (reproduced and annotated below) illustrates one
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`exemplary embodiment of a wireless interface useful as part of the computerized
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`system of FIG. 1 for e.g., “automatic personalization” of the aforementioned
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`functions when the user is proximate to or within the vehicle.
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`Further, the ’156 Patent incorporates by reference U.S. Patent No. 5,539,775
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`(Ex. 2003), which discloses a method and system in which a pseudo noise (PN)
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`sequence is generated for use within a wireless interface, and U.S. Patent No.
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`5,629,981 (Ex. 2004), which discloses a method and system in which authorizes
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`and maintains information security across a wireless interface, such as that shown
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`in FIG. 15. Ex. 1001 at 18:11-24; Ex. 2003 at 3:18-25; Ex. 2004 at 6:9-19.
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`The exemplary computerized information system disclosed in the ’156
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`Patent improves upon previous vehicular information systems (circa mid-1999) by,
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`inter alia, providing a completely intuitive user interface which permits greatly
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`simplified input to the system when the user is within the transport apparatus (e.g.,
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`via a simple spoken name, or touch on a touch screen correlating to a limited
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`number of prescribed categories of information). Ex. 1001 at 8:3-10:2, FIG. 4. The
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`’156 Patent technology allows the user to converge on the desired entity from
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`multiple possibilities in a short period of time due to its simplified user interface,
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`and spatially orient themselves relative to the transport apparatus and the desired
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`entity or organization using intuitive and localized imagery, so that the user can
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`merely utilize the image to find the entity (and not have to remember complicated
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`lists of directions, addresses, etc.). Id. at 8:3-10:2, 1:61-2:7, FIG. 4, FIG. 5. The
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`heavily hierarchical menu structures of prior art systems, e.g., first activate the
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`system, then select or say the top-level function (e.g., “navigation”), then select or
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`say the sub-function (e.g., “restaurants”), then enter a geographic region (e.g.,
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`“San Diego, CA”), then enter a street name or address (e.g., “Broadway”), etc.,
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`were completely obviated in the ’156 Patent, since such paradigms were
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`incompatible with, inter alia, having to converge on an entity location or other
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`desired information within “only seconds”. Id. at 10:35-36.
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`The ’156 Patent provides the foregoing features in the exemplary
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`embodiment with a specific user interface and voice protocol algorithm (see e.g.,
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`FIG. 4, reproduced and annotated below) which obviates the user from having to
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`have any prior knowledge of how to operate the system (e.g., the user need not
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`have ever used the system before, since it is completely intuitive how to operate it),
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`and need only know a name or part of a name of the desired entity for which they
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`seek to obtain information. Id. at 8:27-29. The algorithm includes specific
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`protocols for each of (i) audio interchange with the user (e.g., speech), (ii) tactile
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`interchange with the user (e.g., touch screen), and (iii) combinations of (i) and (ii).
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`Id. at 8:3-9:2.
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`In the “voice prompt” branch (left side of FIG. 4 flowchart), the user is
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`prompted through a series of audible prompts to enter information (which may be
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`entered via speech of the user or the exemplary touch screen) until they converge
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`on a particular desired match from results obtained from a database (which may be
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`a single match, or several possible matches). Id. at 8:56-64. Once the desired
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`“match” is identified by the information system, the appropriate graphic or image
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`is automatically selected for retrieval (e.g., from a networked server) and displayed
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`to the user to provide spatial orientation and a graphic representation of directions.
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`Id. at 8:51-56, 9:47-60. The provided image or graphic is highly localized, so as to
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`immediately spatially orient the user to their local surroundings, including in the
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`exemplary embodiment the image or graphic rendering at least a portion indoors to
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`a building or structure. Id. at 9:47-60.
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`Moreover, with regard to enabling the user to find the desired information
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`(e.g., directions or a map to a local restaurant) and easily “take it with them” after
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`egress from the transport apparatus on their portable device, such functionality
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`obviates the user having to establish a separate wireless or other connection to a
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`network via the portable device. Users within transport apparatus (and/or less
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`capable portable devices such as the exemplary Palm Pilot devices prevalent circa
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`1999) may not have an ability, or time, to establish a separate wired or wireless
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`connection. Id. at 11:15-18. The exemplary embodiment of the ’156 Patent
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`information system solves that issue by providing a vehicle-indigenous interface
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`such that desired data can be conveniently transferred to portable devices via e.g.,
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`preset “one touch” touch-screen or application software commands. Id. at 11:8-
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`12:3, FIG. 7.
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`FIG. 7 of the ’156 Patent (reproduced and annotated below) illustrates one
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`exemplary embodiment of the information system of FIG. 1, configured with the
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`capacitive touch screen input and display device and the high-speed data interface
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`(e.g., Unniversal Seerial Bus pprotocol viaa a multi-ppin connecttor). Id. at
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`the illusstrated example, toucch-sensitivee functionss corresponnding to a
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`11:23-36.
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`“pre-designated” iinformation types (e..g., weatheer, directoryy for a buiilding, etc.)) are
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`apability ffor the userr. Id.
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`Applicaation softwware residennt on the user’s portaable devicee may also
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`basis off both (i) innstigation oof a searchh of the remmote databaase(s) via tthe networrk
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`interface and the iinformationn system, aand/or (ii)
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`FFIGS. 6a annd 6b of thhe ’156 Paatent furtheer illustratee examplees of such ““one
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`on system d informatiThe commputerized
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`further iimproves uupon previious (mid-11999 and pprior) vehiccular informmation
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`systemss by providding a nummber of otheer features
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`integrateed use of shhort-rangee wireless ttechnologyy (e.g., RFIID) and
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`associateed protocools for autoomatic wireeless identiification annd
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`authentication of uusers (Ex. 11001 at 17
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`:50-20:8; ssee also Exx. 2005 andd
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`automatiic “contextt” determinnation, seleection, andd presentattion (on thee
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`ented withh contextuaally relevannt “seconddary” conteent
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`such as aadvertisingg, in addition to the rrequested ““primary” iinformatioon)
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`Patent 88,065,156
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`(Ex. 10001 at Abstrract, 15:19--16:43, 20
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`:9-24:18, 224:39-25:3
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`6, 26:55-
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`28:35, FFIGS. 18a-118d); and
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`(iii)
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`integrateed use of vvarious visuual-band, iinfra-red, aand/or ultraasonic senssors
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`in data ccommunicaation with the informmation systeem that enaable
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`monitoriing of areaas external to the vehiicle (and ddisplay of ssuch data oon
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`the displlay device)), such as ffor securityy purposess (Id. at 15::19-16:43;
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`see
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`also Id. at FIG. 13 (reproducced and annnotated bellow)).
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`ent are repe ’156 Pateaims of theThe chaallenged cl
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`roduced beelow for reeference:
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` 10. CComputer rreadable appparatus ccomprisingg a storage
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`medium, said storage medium coomprising
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`program wiith a plurality of instrructions, thhe storagee medium bbeing
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`part of a computerized information system disposed on or within a
`transport apparatus configured to transport at least one person from
`one location to another, said at least one program being configured
`to:
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`receive an input from a user of the transport apparatus, the
`input relating to a desired function;
`cause access of a remote server via an associated wireless
`interface to access information relating to the desired function;
`receive accessed information via the wireless interface; and
`implement the desired function using at least a portion of the
`received information;
`wherein said at least one program is further configured to:
`establish an ad hoc communication link with a portable
`computerized device of a user of the transport apparatus; and
`download at least a portion of the received information
`to the portable computerized device via the communication link.
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`11. The apparatus of claim 10, wherein said download of said
`at least a portion of the received information to the portable
`computerized device via the communication link is initiated by
`software resident on the portable device.
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`15. The apparatus of claim 10, wherein:
`said remote server is in communication with a database of
`business entities, said database being searchable at least by a name of
`a business entity; and
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`said input comprises a digitized representation of a speech
`input, the speech input being received via a microphone located
`within said transport apparatus, the speech comprising said name of
`said business entity.
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`18. The apparatus of claim 10, wherein the implementation of
`the desired function comprises synthesizing speech for playout over
`one or more speakers disposed within said transport apparatus, the
`speech being synthesized based at least in part on said received
`information.
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`20. The apparatus of claim 10, wherein said received
`information is configured specifically for the user.
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`21. The apparatus of claim 20, wherein said configuration
`specifically for the user is based at least in part on data stored on a
`remote server, the data relating specifically to that user.
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`22. The apparatus of claim 21, wherein said data stored on a
`remote server relating specifically to that user is based at least in part
`on one or more previously supplied user-selected configuration
`parameters.
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`23. The apparatus of claim 10, wherein said input relating to a
`desired function comprises an input to obtain information relating to
`a particular destination or entity.
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`24. The apparatus of claim 23, wherein said at least one
`program is further configured to receive a second digitized
`representation of speech input relating to the particular destination or
`entity in order to resolve one or more ambiguities associated
`therewith.
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`Id. at 25:37-63; 26:9-16; 26:29-33; and 26:38-54.
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`III. Patent Owner’s Response to Petitioner’s Statement of Facts
`Patent Owner first provides the following responses to various statements set
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`forth by Petitioner in Sections III.A and III.B of the Petition.
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`Petitioner’s Characterization of the Invention
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`A.
`Petitioner characterizes the invention as follows:
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`The ’156 patent describes an elevator information system, shown
`generally in Figs. 1 and 2.
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`Pet. at 2. However, the foregoing characterization of the invention is incomplete,
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`and has substantive omissions so as to be misleading. Specifically, the ’156 Patent
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`specification states:
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`The present invention relates to the field of personnel transport
`apparatus, and specifically to elevators and similar devices for
`transporting people from one location to another which incorporate
`various information technologies.
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`Ex. 1001 at 1:34-37.
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` It is noted that while the system and methods of the invention
`disclosed herein are described primarily with respect to an elevator
`car, certain aspects of the invention may be useful in other
`applications, including, without limitation, other types of personnel
`transport devices such as trams or shuttles…
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`Id. at 5:28-33. Hence, the specification as originally filed clearly contemplated
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`application of the various aspects of the invention(s) to, inter alia, other types of
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`transport apparatus and transport devices.
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`Petitioner’s Characterization of the Prosecution History
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`B.
`In summarizing the prosecution history of the ’156 Patent, Petitioner
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`contends the following:
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`[T]he remaining limitations were found to be in the prior art cited by
`the Examiner, i.e., Hancock ’100, which was not disputed by Mr.
`Gazdzinski.
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`Pet. at 5 (emphasis added). As an initial matter, Petitioner refers to an Amendment
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`dated July 11, 2011, submitted in the ’857 Application but has failed to provide the
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`Amendment as an exhibit and has also failed to identify specific portions of the
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`Amendment that support Petitioner’s contention. Additionally, the foregoing
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`characterization of the prosecution history of the ’156 Patent is incorrect and
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`misleading. Specifically, in Patent Owner’s July 11, 2011 Amendment and
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`Response to Office Action (“July 11, 2011 Response”; Ex. 2007), Patent Owner
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`stated:
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`Please cancel Claims 41-56 and 66-84 without prejudice,
`amend Claim 59, and add new Claims 85-113…
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`Ex. 2007 at 2 (emphasis added). Patent Owner further stated in relevant part:
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`The Examiner should infer no (i) adoption of a position with respect
`to patentability, (ii) change in the Applicant’s position with respect to
`any claim or subject matter of the invention, or (iii) acquiescence in
`any way to any position taken by the Examiner, based on such
`cancellations or additions.
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`Id. at 10-11 (emphasis added).
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`Hence, Petitioner’s assertion that “the remaining limitations [of Claim 10]
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`were found to be in the prior art cited by the Examiner, i.e., Hancock ’100, which
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`was not disputed by Mr. Gazdzinski” misrepresents the above facts. In fact, Patent
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`Owner made several statements explicitly indicating that the Examiner’s positions
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`in the Office Action (including that on Hancock ’100) were not acquiesced to by
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`Patent Owner. See also 3M Innovative Properties, Co., v. Avery Dennison Corp.,
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`350 F.3d 1365, 1373-74 (Fed. Cir. 2003).
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`Petitioner also contends that:
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`Hancock ’100, which, as stated above, was cited by the Examiner
`during prosecution of the ’156 patent, claims on its face to be a
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`continuing application of a number of prior applications, including
`U.S. Patent Application Serial No.09/257,462, which issued as
`Hancock.
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`Pet. at 5 (footnote 2). Again, Petitioner relies on evidence to support its petition but
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`has failed to provide Hancock ’100 as an exhibit and has also failed to identify
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`specific portions of Handcock ’100 that support Petitioner’s contention. Contrary
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`to Petitioner’s statements, Hancock ’100 states on its face that it is a continuation-
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`in-part (CIP) of one prior application with Serial No. 09/257,462, which eventually
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`issued as Pat. No. 6,202,023 (“Hancock”, Ex. 1003), the latter which is a
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`continuation-in-part (CIP) of Serial No. 09/188,153, and not “a continuing
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`application of a number of prior applications” (aka a mere continuation) as
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`Petitioner contends. Ex. 2008 at page 1; Ex. 1003 at page 1. In other words,
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`Hancock ’100 states on its face that it is a CIP of one other application, which is a
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`CIP of a prior application, and so forth.
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`Hence, at least portions of Hancock ’100 (Hancock ’100 being specifically
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`relied on by the Examiner in his Section 102 rejection of inter alia Claim 66 of the
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`’156 Patent during prosecution) are not prior art to the ’156 Patent at issue in this
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`IPR, in that the effective filing date for that subject matter is at best the filing date
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`of Application Serial No. 09/707,213, i.e., November 3, 2000, which is more than a
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`year after the priority date of the ’156 Patent (June 10, 1999). Ex. 2008 at page 1.
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`IV. Patent Owner Has Statutorily Disclaimed Claims 10, 18, 20-21, and
`23-24
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`Next, Patent Owner notes that as indicated in Ex. 2009, a Statutory
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`Disclaimer has been filed with the USPTO with respect to the ’156 Patent,
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`statutorily disclaiming Claims 10, 18, 20, 21, 23, and 24 of the ’156 Patent under
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`35 U.S.C. § 253(a). Hence, Claims 1-9, 11-17, 19, 22, and 25-38 of the ’156 Patent
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`remain in force.
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`While the Board’s decision on institution would be based on the remaining
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`claims (see Sony Computer Entm’t Am. Inc. v. Dudas, 2006 WL 1472462 (E.D.Va.
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`2006)), Patent Owner notes that statutorily disclaimed Claim 10 is the sole
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`independent Claim subject to the Petition, and all other contested claims depend
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`either directly or indirectly thereon (and accordingly its limitations are necessarily
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`imported into each claim depending therefrom). Hence, the analysis of Claim 10 is
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`warranted for proper understanding of Claims 11, 15, and 22, and Patent Owner
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`provides such analysis herein.
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`Patent Owner further notes that the Statutory Disclaimer with respect to
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`Claims 10, 18, 20, 21, 23, and 24 of the ’156 Patent does not constitute an
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`admission or acquiescence by Patent Owner with regard to any aspect of the
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`Petition. Rather, Patent Owner disagrees with Petitioner’s arguments set forth in
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`the Petition, and makes the present disclaimer of Claims 10, 18, 20, 21, 23, and 24
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`without prejudice to Patent Owner’s ability to rebut such arguments (including
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`characterizing and distinguishing the prior art references cited
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