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 IPR2016-00156
`Patent 8,296,146
`___________________
`
`PATENT OWNER’S REPLY TO PETITIONER’S RESPONSE TO
`MOTION TO AMEND
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
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`
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`___________________
`
`Case IPR2016-00156
`Patent 8,296,146
`___________________
`
`PATENT OWNER’S REPLY TO PETITIONER’S RESPONSE TO
`MOTION TO AMEND
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Case IPR2016-00156
`Patent 8,296,146
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`
`TABLE OF CONTENTS
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`Introduction ........................................................................................................ 1
`I.
`II. The Proposed Claims are Directed to Patentable Subject Matter ...................... 1
`III. The Proposed Claims do not Enlarge the Scope of the ‘146 Patent .................. 5
`IV. The Proposed Claims are not Indefinite ............................................................. 6
`V. The Proposed Claims are Reasonable ................................................................ 7
`VI. The Proposed Claims are Fully Supported by the Original Disclosure ............. 9
`VII. The Proposed Claims are Patentable over the Prior Art .................................... 9
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`CASES
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`Alice Corp. Pty. v. CLS Bank Int’l,
` 134 S. Ct. 2347 (2014) ..................................................................................... 1,2,3
`Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
` 2015-1180, slip op. (Fed. Cir. 2016) ............................................................ 1,2,3,4
`Bascom Global Internet v. AT&T Mobility LLC,
` 827 F.3d 1341 (Fed. Cir. 2016) ....................................................................... 1,2,4
`Enfish LLC v. Microsoft Corp.,
` 822 F.3d 1327 (Fed Cir. 2016) ........................................................................ 1,2,3
`McRO, Inc. v. Bandai Namco Games Amer., Inc., et al.,
` 837 F.3d 1299 (Fed. Cir. 2016) ....................................................................... 1,2,3
`Sonix Tech. Co. v. Publications Int’l, LTD et al.,
` 2016-1449, slip op. (Fed. Cir. Jan. 5, 2017) ............................................................. 6
`STATUTES
`
`35 U.S.C. § 101 ......................................................................................................1, 3
`35 U.S.C. § 112 .......................................................................................................2,6
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`ii
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`I.
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`Introduction
`In Volkswagen Group of America, Inc. v. West View Research, LLC, IPR
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`2016-00156, Petitioner’s Response
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`to Patent Owner’s Motion
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`to Amend
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`(“Response”), Paper 15, November 14, 2016, Petitioner fails to refute (i) the
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`eligibility of the proposed substitute and new claims (“substitute claims”) under
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`§101; (ii) the patentability of the substitute claims over the art; (iii) that the
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`amendments of the substitute claims are fully supported; (iv) that the amendments
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`are responsive to a basis for patentability; and (v) that the substitute claims do not
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`enlarge claim scope.
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`II. The Proposed Claims are Directed to Patentable Subject Matter
`Petitioner completely ignores the most recent and relevant precedent (i.e.,
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`the Amdocs, Enfish, Bascom, or McRO opinions from the CAFC1) in its Section
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`101 analysis of its Response. All such precedent clearly cuts against both of
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`Petitioner’s positions that 1) the claimed subject matter is abstract under Alice Step
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`One, and 2) there is no “inventive concept” under Alice Step Two.
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`
`
` 1
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` Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 2015-1180, slip op. (Fed. Cir.
`2016); Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016); Bascom
`Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed Cir. 2016); McRo, Inc.
`v. Bandai Namco Games Amer., Inc., et al., 837 F.3d 1299 (Fed. Cir. 2016).
`1
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`Moreover, the District Court’s analyses of the challenged ‘146 claims upon
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`which Petitioner heavily relies had none of the benefit of any of the later guidance
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`of Amdocs, Enfish, Bascom, or McRo, and was flawed in numerous ways, by: (i)
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`adopting the position that any computer that provides information to a user is
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`abstract under Alice Step 1, a clear error under the later guidance of the CAFC;
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`(ii) failing to even consider that combinations of allegedly generic components
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`may represent novel/non-obvious subject matter (in contravention of Amdocs,
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`Bascom and Enfish); and (iii) failing to properly construe Patent Owner’s claims in
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`light of the disclosed data structures, hardware, and algorithmic flowcharts –
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`explicitly dismissing the latter as having no probative value.
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`Moreover, no 112(6) inquiry was performed for ‘146 claim 18, in direct
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`contravention of Amdocs. (see Amdocs slip op. at 8, n.3), nor was the requisite
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`“pre-emption” analysis under Step 1 or Step 2. Patent Owner’s substitute claims
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`are narrowly drawn and pre-empt only specific configurations.
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`To summarize the CAFC holdings supporting patentability of the claims:
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`1) Per Enfish, computer technology is not inherently abstract. Enfish, 822
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`F.3d at 1335. Nor is software, including associated logical structures and
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`processes. Id. Petitioner cannot reconcile these holdings with the District Court’s
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`position that any computer that provides information is abstract under Alice Step 1.
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`Petitioner’s characterizing all the substitute claims as “collecting information,
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`analyzing it, and displaying certain results of the collection and analysis”
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`(Response, at 2) is also inconsistent with Enfish (Id. at 1337).
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`2) Courts must not ignore claim requirements and specific, claimed features
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`in both Step 1 and Step 2 of the Alice test. McRo, 837 F.3d at 1313. The “abstract
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`idea exception” excludes claims on results themselves, rather than on processes
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`that produce the results. Id. at 1314. Characterization of the substitute claims as
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`presenting results only (Response at 5) is also inconsistent with McRo. The
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`substitute claims have particular structures and algorithm steps for performing the
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`functions. Moreover, detailed components and steps are explicitly recited.
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`3) Even if, arguendo, the substitute claims were not limited by the features
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`above, McRo clearly sets forth that a genus may be patented under §101 (“Patent
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`law has evolved to place additional requirements on patentees seeking to claim a
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`genus; however, these limits have not been in relation to the abstract idea
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`exception to § 101.” Id. {emphasis added})
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`4) Petitioner’s argument that the claimed inventions involve “all generic”
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`components (Response at 8) flies in the face of most recent CAFC holdings,
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`including Amdocs.2 The “how” of Patent Owner’s substitute claims is even more
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` 2
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` Openet argues that…a “distributed architecture” is “a generic type of architecture.
`…To whatever extent this claimed approach was old, obvious, too broadly
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`detailed and specific than that of Amdocs. For instance, computer-based automated
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`user authentication and identification so as to enable e.g., access to user-specific
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`premises environmental functions, based on radio frequency transmissions from a
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`personal radio frequency device carried by the user (see e.g., substitute claims 35,
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`37, and 39) was far from “generic” or performed by a garden-variety PC in mid-
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`1999, and in fact was nowhere disclosed in any art cited by the Petitioner.
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`See also Amdocs slip op. at 22-23 (“…these generic components operate in
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`an unconventional manner to achieve an improvement in computer functionality.”)
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`{emphasis added} The claimed inventions operate in such unconventional manner,
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`and Petitioner has not demonstrated otherwise.
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`
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`Patent Owner’s position is also consistent with Bascom (“an inventive
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`concept can be found in the non-conventional and non-generic arrangement of
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`known, conventional pieces. Bascom, 827 F.3d at 1349 {emphasis added}). Even
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`if arguendo all of Patent Owner’s substitute claims recite all generic components,
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`it is the ordered combination which must be evaluated. Petitioner provides no such
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`“ordered combination” analysis for the claims. When such analysis is performed, it
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`is clear that each of the claims recites (i) particular components and structure to
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`
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`claimed, or unsupported, these considerations are apart from the eligibility inquiry
`…” Amdocs, 19 {emphasis added}
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`achieve the desired results; and (ii) particular steps and processes for achieving the
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`desired results, including e.g., in the context of a particular radio frequency
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`architecture and remote database architecture.
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`III. The Proposed Claims do not Enlarge the Scope of the ‘146 Patent
`Petitioner alleges that the proposed claims improperly enlarge the scope of
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`the claims of the ’146 patent (Response, 8-9). Specifically, Petitioner contends that
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`claim 37 (proposed as a substitute from claim 11, which originally depended from
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`claim 10), does not depend (and therefore does not include) the limitations of claim
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`36.
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`
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`Patent owner submits that the dependency of proposed claim 37 on claim 35
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`is a typographical error, and respectfully requests that the Volkswagen Group of
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`America, Inc. v. West View Research, LLC, IPR 2016-00156, Motion to Amend
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`(“Motion to Amend”), Paper 12, Aug. 15, 2016 be amended as follows (i.e., to
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`reflect dependency of claim 37 on claim 36 vs. 35):
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`
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`“37. (Proposed substitute for Claim 11) The apparatus of claim [[10]] [[35]]
`36, wherein:…”
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`When such amendment is entered, Petitioner’s argument regarding claim 37
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`is rendered moot, and no other specific bases of enlargement have been cited by
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`Petitioner.
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`IV. The Proposed Claims are not Indefinite
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`Petitioner asserts that the substitute claims include terms of degree and purely
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`subjective limitations, citing e.g., “an area or zone particularly associated with the
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`user”, and “radio frequency devices that are immediately proximate to a transport
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`apparatus”, navigating “in the local area” (Response, at 9). Such assertions are
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`without merit. See Sonix Tech. Co. v. Publications Int’l, LTD, 2016-1449, slip op.
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`(Fed. Cir. Jan. 5, 2017), stating that “[i]ndefiniteness must be proven by clear and
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`convincing evidence.” Id. at 11 {emphasis added}, and finding that the term
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`“visually negligible” was not indefinite under §112(2). Petitioner provides no such
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`“clear and convincing” evidence, but only bare assertions that the terms at issue are
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`“subjective.” Specifically:
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`1) Regarding “an area or zone particularly associated with the user”, see
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`‘146 at 20: 24-32 and 41-47, and FIG. 17, each which clearly describe
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`user-specific areas or zones of the premises (e.g., FIG. 17 showing
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`individual offices in a space).
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`2) Regarding “radio frequency devices that are immediately proximate to a
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`transport apparatus”, see ‘146 at 19: 33-37, which clearly describes
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`interrogation of users within a limited range so as to not interfere with
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`other proximate readers. Such range is readily measured.
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`3) Regarding navigating “in the local area”, see ‘146 at 2: 11-16; 11: 22-25;
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`12: 59-65, which clearly describe numerous examples of navigation in a
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`local area (e.g., nearest airport, nearby buildings, local weather…), which
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`are readily ascertained by one of ordinary skill when reading the claim.
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`V. The Proposed Claims are Reasonable
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`Petitioner alleges that the proposed claims are not reasonable because: (1) they
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`are allegedly not responsive to an alleged ground of unpatentability, and (2) there are
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`too many proposed claims. Response, 9.
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`Patent Owner respectfully disagrees on both counts. For example, per page 10
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`of the Response, Petitioner alleges (with regards to Claim 35) that the recited feature
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`“the authentication comprising: (i) receipt of electromagnetic radiation …; and (ii)
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`comparison of the received first data, and second data ….” was not alleged by WVR
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`to have any bearing on patentability. Patent Owner respectfully directs the PTAB’s
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`attention to page 9 of the Motion to Amend, in which the patentability of
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`“authentication” is discussed.
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`Additionally, no specific reasoning is provided by Petitioner as to allegedly
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`why there are too many proposed claims. Patent Owner has merely provided for a
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`single proposed substitute claim for each challenged claim. Specifically, proposed
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`substitute Claim 35 is a proposed substitute for challenged Claim 1; proposed Claim
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`36 is a proposed substitute for challenged Claim 10; proposed Claim 37 is a
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`proposed substitute for challenged Claim 11; proposed Claim 38 is a proposed
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`substitute for challenged Claim 17; proposed Claim 39 is a proposed substitute for
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`challenged Claim 18; proposed Claim 40 is a proposed substitute for challenged
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`Claim 19; proposed Claim 41 is a proposed substitute for challenged Claim 27; and
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`proposed Claim 42 is a proposed substitute for challenged Claim 30. See e.g., Idle
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`Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 4 (Jun. 11, 2013).
`
`Finally, the Petitioner alleges that Patent Owner makes no showing of a
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`“special circumstance” to justify proposed dependent claims 36, 37, and 42.
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`(Response, 13). However, Patent Owner provides specific reasoning for claim 36
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`(Motion to Amend, 9 – 10), claim 37 (Motion to Amend, 10 – 11), and claim 42
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`(Motion to Amend, 15 – 16) for their patentably distinct nature. Patent Owner
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`respectfully submits that if a proposed independent claim is patentably distinct over
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`the prior art, then its dependent claims are also patentably distinct over the prior art.
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`Conversely, if a proposed independent claim is considered by the Board to be not
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`patentably distinct over the prior art, then its dependent claims may none-the-less be
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`patentably distinct over the prior art, thereby providing an independent basis for
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`patentability. Nowhere that Patent Owner find do the rules state that demonstrations
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`of patentability can only properly rely on a single claim.
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`VI. The Proposed Claims are Fully Supported by the Original Disclosure
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`Per pages 14 – 15 of the Petitioner alleges that various features of Claims 38
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`– 40 are not supported by the original application (“’980 application,” Ex. 2001).
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`The Petitioner then goes on to point towards specific examples within the
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`specification that allegedly support its position, but in fact support the contrary;
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`i.e., why the claimed features are supported. For example, Petitioner alleges that
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`Applicant’s claimed “radio frequency interrogation apparatus configured to
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`interrogate only radio frequency devices that are immediately proximate to the
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`transport apparatus” lacks support, but then points to specific portions of the
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`original application in which the interrogator is described as having “limited
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`range”, etc., “such that it will not interfere with the readers of other elevator cars
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`nearby or other RF devices.” Patent Owner therefore wholly disagrees with
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`Petitioner’s contentions, which are self-contradictory.
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`VII. The Proposed Claims are Patentable over the Prior Art
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`Patent Owner disagrees with Petitioner’s allegations that Claims 35 – 42 are
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`unpatentable in view of the prior art. Specifically, in numerous instances,
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`Petitioner ignores the language of the proposed substitute claims, as well as Patent
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`Owner’s reasoning for patentability.
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`For example, with regards to proposed substitute claim 41, Patent Owner
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`submits that known prior art does not teach or suggest “receiving digital video data
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`that is generated by a camera contemporaneous with receipt of a user input relating
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`to a graphical display of a location associated with the business or entity.” (Motion
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`to Amend, 22) Petitioner does not dispute or address this feature of proposed
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`substitute claim 41. (Response, 24)
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`With regards to substitute claim 42, Patent Owner submits that known prior
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`art does not teach or suggest a “map selected based at least in part on one or more
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`previously supplied user-specified configuration parameters stored on the remote
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`network apparatus.” (Motion to Amend, 23) Petitioner does not dispute or address
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`this particular feature of substitute claim 42. (Response, 24 – 25).
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`Similar deficiencies of the prior art are noted with regards to substitute claim
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`35 (“provide the user with remote control of environmental functions associated
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`with a premises specifically associated with the user”) (Motion to Amend, 8)
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`(Response, 15 – 18); substitute claim 38 (“via a particular or unique association
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`between the third data and portable radio frequency device”) (Motion to Amend,
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`11 – 12) (Response, 20); substitute claim 39 (“enable remote invocation of one or
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`more security system functions of a premises … while the user is within the
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`transport apparatus”) (Motion to Amend, 13) (Response, 21 – 22); and substitute
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`claim 40 (“cause conversion of a coordinate of a user touch input via the touch
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`screen input and display device relating to the map graphic to an actual geographic
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`coordinate”) (Motion to Amend, 14) (Response, 23 – 24).
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`Dated: January 11, 2017
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`
`
`
`
`Gazdzinski & Associates, PC
`16644 West Bernardo Drive, Suite 201
`San Diego, CA 92127
`Telephone No.: (858) 675-1670
`Facsimile No.: (858) 675-1674
`
`Respectfully submitted,
`
`
`
`/Peter J. Gutierrez, III/
`Peter J. Gutierrez, III
`Reg. No. 56,732
`Lead Counsel for Patent Owner
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`Case IPR2016-00156
`Patent 8,296,146
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`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that on
`January 11, 2017, a complete and entire copy of the foregoing
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S
`OPPOSITION TO MOTION TO AMEND
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`was provided via email to the Petitioner by serving the correspondence email
`address of record as follows:
`Michael J. Lennon, Reg. No. 26,562
`Clifford A. Ulrich, Reg. No. 42,194
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`Emails:
`ptab@kenyon.com
`mlennon@kenyon.com
`culrich@kenyon.com
`
`
`The parties have agreed to electronic service in this proceeding.
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`Respectfully submitted,
`
`/Peter J. Gutierrez, III/
`Peter J. Gutierrez, III
`Reg. No. 56,732
`
`
`
`Dated: January 11, 2017
`
`
`
`
`
`
`
`Gazdzinski & Associates, PC
`16644 West Bernardo Drive, Suite 201
`San Diego, CA 92127
`Telephone No.: (858) 675-1670
`Facsimile No.: (858) 675-1674
`
`
`
`
`1
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