UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PLAID TECHNOLOGIES INC.
`Petitioner
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`v.
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`YODLEE, INC. and YODLEE.COM, INC.
`Patent Owners
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`Case IPR2016-00275
`Patent 6,199,077
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`TABLE OF CONTENTS
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`I. 
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`II. 
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`INTRODUCTION ..................................................................................... 1 
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`STATEMENT OF RELIEF REQUESTED .............................................. 2 
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`III.  CLAIM CONSTRUCTION ...................................................................... 3 
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`IV.  THE BOARD CANNOT INSTITUTE PETITIONER’S
`TIME-BARRED PETITION ..................................................................... 3 
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`A. 
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`B. 
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`Petitioner Failed to Satisfy the Statutory Requirements for
`Filing and Thus Cannot Obtain a December 2, 2015 Filing
`Date ................................................................................................... 4 
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`Petitioner Failed to Satisfy its Burden to Identify Authority
`Allowing the Board to Grant an Earlier Filing Date and to
`Provide Sufficient Cause to Do So ................................................... 7 
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`V. 
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`THE BOARD SHOULD NOT INSTITUTE GROUNDS 1
`AND 2, BECAUSE PETITIONER HAS FAILED TO PROVE
`THAT FREISHTAT IS PRIOR ART TO THE ’077 PATENT .............. 11 
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`VI.  GROUND 3 SHOULD NOT BE INSTITUTED BECAUSE
`THE PRIOR ART DOES NOT DISCLOSE STORING
`INFORMATION/DATA SPECIFIC TO A PERSON ............................ 15 
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`1.  [1.c]: a list of addresses of Internet sites associated with a
`specific person, which sites store information specific to
`the person .................................................................................... 16 
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`2.  [7.a]: In an Internet Portal system, a method for gathering
`data specific to a person from a plurality of Internet sites
`storing data specific to that person, ............................................ 18 
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`3.  [4]: The Portal of claim 1 wherein the data gathered by the
`path agents is data specific to the person. [10]: The method
`of claim 7 wherein the data gathered by the gathering agents
`is specific to the person. ............................................................. 19 
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`VII. 
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`IF THE BOARD DECIDES TO INSTITUTE, IT SHOULD NOT
`INSTITUTE PETITIONER’S REDUNDANT CHALLENGES ............ 20 
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`A. 
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`B. 
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`C. 
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`The Board’s Precedent Required Petitioner to Distinguish
`Between Otherwise Redundant Prior Art References .................... 21 
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`The Petition Recites Multiple Redundant Grounds ....................... 23 
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`Petitioner Has Not Made Any Argument of Non-Redundancy ..... 24 
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`VIII.  CONCLUSION ........................................................................................ 25 
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`2Wire, Inc. v. TQ Delta LLC,
`IPR2015-00239 (Paper10, Jan. 15, 2015) ........................................................ 8
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`ABB Inc. v. Roy-G-Biv Corp.,
` IPR2013-00063 (Paper 21, Jan. 16, 2013) ............................................ 8, 9, 10
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`Berk-Tek LLC v. Belden Technologies Inc.,
`IPR2013-00057 (Paper 21, May 14, 2013) .................................................... 20
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`ConMed Corp. v. Bonutti Skeletal Innovations, LLC,
`IPR2013-00624 (Paper 18, Feb. 21, 2014) ...................................................... 8
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`CoreLogic, Inc. v. Boundary Solutions, Inc.,
`IPR2015-00226 (Paper 34, Oct. 27, 2015) .................................................... 10
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`Dynamic Drinkware, LLC v. Nat’l Geographic,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................... 13, 14
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`GHS Health Maintenance Organization, Inc. v. U.S.,
`536 F.3d 1293 (Fed. Cir. 2008) ....................................................................... 7
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ....................................................................................... 16
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`Liberty Mutual Ins. Co. v. Progressive Casualty Co.,
`CBM2012-00003 (Paper 7, Oct 25, 2012)......................................... 21, 22, 24
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`Mutual Ins. Co. v. Progressive Casualty Co.,
`CBM2012-00003 (Paper 7, Oct. 25, 2012) ................................................... 22
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`Oracle Corp. v. Patent of Clouding IP, LLC,
`IPR2013-00075 (Paper 15, June 13, 2013) .............................................. 22, 24
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`Securus Techs., Inc. v. Global Tel*Link Corp.
`IPR2015-00153 (Paper 12, May 1, 2015) ................................................ 14, 15
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`Sony Corp v. Yissum Research Development Co. of the Hebrew
`Univ. of Jerusalem,
`IPR2013-00219 (Paper 33, Nov. 21, 2013) ............................................. 20, 21
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`Taiwan Semiconductor Mfg. Co., Ltd.; TSMC N. Am. Corp. v.
`Ziptronix,
`IPR2014-00114 (Paper 14, May 1, 2014) ...................................................... 24
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`Terremark North America LLC v. Joao Control & Monitoring Sys.,
`LLC,
` IPR2015-01482 (Paper 10, Dec. 28, 2015) ........................................... passim
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`Statutes
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`35 U.S.C. § 103 ................................................................................................... 16
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`35 U.S.C. § 312(a) ....................................................................................... passim
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`35 U.S.C. § 314 ................................................................................................... 25
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`35 U.S.C. § 315(b) ....................................................................................... passim
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`Other Authorities
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`37 C.F.R. § 42.1(b) ............................................................................................. 20
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`37 C.F.R. § 42.5 .................................................................................................... 7
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`37 C.F.R. § 42.104(c) ........................................................................................ 7, 8
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`EXHIBIT LIST
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`Exhibit No. Description
`2001
`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of
`Sen. Kyl)
`ESPN Insider: Benefits, WayBackMachine, June 22, 2001
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`2002
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`Pursuant to 37 C.F.R. § 42.107(a), the Patent Owners, Yodlee, Inc. and
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`Yodlee.com, Inc. (“Yodlee” or “Patent Owners”), hereby submit the following
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`Preliminary Response in response to the Petition for Inter Partes Review
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`(“IPR”) of U.S. Patent No. 6,199,077 (“the ʼ077 Patent”) numbered IPR2016-
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`00275, filed by Plaid Technologies, Inc. (“Plaid” or “Petitioner”).
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`I.
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`INTRODUCTION
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`Petitioner waited until 10:30 p.m. on the final night of the one-year
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`deadline for filing an IPR petition, ran out of time, and was unable to complete
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`the statutorily-mandated filing and service by December 2, 2015. Thus, per 35
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`U.S.C. § 312(a), the Petition cannot be accorded a filing date of December 2,
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`2015. This means the Board cannot institute the Petition, as it is barred by 35
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`U.S.C. § 315(b). Petitioner’s earlier filed Motion (Paper 9) to alter the filing
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`date seeks extraordinary relief, requesting an effective extension of the statutory
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`deadline. But, Petitioner’s filing problems arose from its own intentional delay
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`in completing the petition, its decision not to file two petitions in parallel, and
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`its failure to effect timely service, despite having every means at its disposal to
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`do so. Petitioner thus cannot meet its burden of showing how the Board has
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`authority on these facts to grant this extraordinary relief. Thus, the Board
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`should deny the Petition as time-barred by 35 U.S.C. § 315(b).
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`Notwithstanding that the Petition violates Section 315(b), the Petition
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`fails to establish invalidity of a single one of the claims. First, the Petition fails
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`to establish that the art relied upon in Grounds 1 and 2 – Freishtat (Ex. 1003) –
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`is even prior art to the ’077 Patent. Petitioner simply asserts that Freishtat is
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`able to claim priority to a provisional application, based on an incorrect legal
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`test. Petitioner provides no analysis whatsoever of the correct legal inquiry:
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`whether the claims of Freishtat are supported by its provisional application.
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`Therefore, Petitioner has failed to establish as a threshold matter that Freishtat is
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`prior art, and Grounds 1 and 2 of the Petition should be denied.
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`With regard to Ground 3, Petitioner similarly declares that the clearly
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`public, non-personal information disclosed in the cited prior art meets the claim
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`requirements reciting “information specific to the person.” Petitioner provides
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`no rationale or argument with regard to how information from CNN, ESPN, or
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`the NASDAQ stock exchange from the prior art could be “information specific
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`to the person” – they simply declare it to be so. It is all clearly public, i.e., non-
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`personal information, and thus Ground 3 also fails.
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`Moreover, Grounds 1 and 2 are wholly redundant with Ground 3.
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`Petitioner does not offer any argument at all as to why one ground is stronger or
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`weaker than any other ground. Thus, Petitioner has failed to show that the
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`grounds are not redundant. If the Board decides to institute, the Board should
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`therefore institute only on Ground 3, which covers all asserted claims using
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`documents with clear, indisputable priority dates.
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`II.
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`STATEMENT OF RELIEF REQUESTED
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`Patent Owners respectfully requests that this Board deny this Petition for
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`IPR of the ’077 Patent with regard to all claims (1-12).
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`III. CLAIM CONSTRUCTION
`To the extent that this case is instituted, Patent Owners reserves the right
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`to address claim construction issues that arise with respect to its further
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`arguments to be made in the Patent Owners’ Response.
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`IV. THE BOARD CANNOT INSTITUTE PETITIONER’S TIME-
`BARRED PETITION
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`The IPR statute only grants the PTO authority to institute an IPR if that
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`petition is filed within one year of the Petitioner being served with a complaint
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`for patent infringement. 35 U.S.C. § 315(b); see also Terremark North America
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`LLC v. Joao Control & Monitoring Sys., LLC, IPR2015-01482 (Paper 10, Dec.
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`28, 2015) at 7.1 As per the same statute, a petition may only be given a filing
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`date once (1) the petition has been filed with all supporting evidence and
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`exhibits; (2) payment has been made; and (3) the complete petition is served on
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`the patent owner. 35 U.S.C. § 312(a); Terremark at 7.
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`It is undisputed that Petitioner was served with the complaint on
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`December 2, 2014. See Ex. 1002; Petition at 2. Thus, per Section 315(b), the
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`Petition must have been filed by December 2, 2015 in order for the PTO to
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`1 Indeed, this one year requirement was specifically debated by Congress and
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`the result of a compromise with proponents of a shorter time bar. Ex. 2001, 157
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`Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl). The time-
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`bar was no after-thought but a carefully considered part of the legislation that
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`should not be undermined absent clear authority to do so.
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`consider it. However, the Petition was not filed by that date because Petitioner
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`failed to satisfy the statutory requirements as of December 2nd. Thus, the
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`Petition is untimely and institution should be denied. Furthermore, Petitioner
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`failed to identify any authority allowing the Board to grant an earlier filing date
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`and also failed to provide sufficient cause to do so. Thus, the Board should not
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`alter the filing date of the Petition, but instead should deny institution.
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`A.
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`Petitioner Failed to Satisfy the Statutory Requirements for
`Filing and Thus Cannot Obtain a December 2, 2015 Filing Date
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`Petitioner failed to satisfy the statutory criteria by December 2nd, and thus
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`the Petition was untimely and the Board therefore cannot institute inter partes
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`review. The failure to satisfy these statutory criteria by December 2, 2015 is
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`determinative and prevents Petitioner from obtaining a December 2nd filing date.
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`Petitioner filed a “Motion to Correct Electronic Filing Date” on February
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`8, 2016 (Paper 9), to which Patent Owners filed a response on February 16,
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`2016 (Paper 10). As explained in Patent Owners’ response, Petitioner makes no
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`argument that it satisfied each of the statutory requirements by December 2,
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`2015. Notably, it is undisputed that Petitioner did not serve (or even attempt
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`service) until December 3rd. Ex. 1024 (Screenshot of Federal Express Tracking
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`Data). It is also undisputed that Petitioner had not completed the upload of all
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`of the required parts of its Petition nor had it clicked “Submit.” See ’077
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`Petition Filing Receipt, Ex. 1023 (filing not complete until December 3, 2015);
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`Amin Decl., Ex. 1021 at ¶ 13; McCormack Decl., Ex. 1022 at ¶ 8. Thus, a
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`filing date of December 2, 2015 may not be granted because Petitioner failed to
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`satisfy the statutory criteria by that date.
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`Petitioner’s argument that § 315(b) is merely satisfied by uploading the
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`petition without exhibits (or with only some exhibits) lacks any support in the
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`statutes, case law, regulation, or any other authority. In fact, Petitioner’s own
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`evidence makes clear that the PTO does not consider the filing to have been
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`complete upon even the clicking of submit, much less upon partial uploading of
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`some subset of the required files. The standard PTO Filing Receipt states:
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`“Assignment of an actual filing date is contingent on confirmation of fee
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`payment, proper service and compliance with all other requirements.” ’077
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`Petition Filing Receipt, Ex. 1023 (emphasis added). This evidence shows the
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`PTO recognizes that a filing date is contingent upon satisfaction of all statutory
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`requirements, which Petitioner failed to do here by December 2, 2015.
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`Petitioner’s arguments that § 312(a) was satisfied, or alternatively that it
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`is not required to be satisfied for “filing” under § 315(b) are similarly
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`unpersuasive. The plain text of § 312(a) declares that “A petition filed under
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`section 311 may be considered only if” the listed requirements are met. 35
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`U.S.C. § 312(a) (emphasis added). A petition that cannot statutorily be
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`considered by the PTO cannot be accorded a filing date. Indeed, the Board has
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`previously acknowledged this, holding “a petition is only accorded a filing date
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`once (1) a petition has been filed; (2) payment has been made; and (3) the
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`complete petition is served on the patent owner” while citing 35 U.S.C.
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`§ 312(a). Terremark at 7.
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`There is no dispute that the requirements of § 312(a) were not satisfied on
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`December 2, 2015. First, 35 U.S.C. § 312(a)(3) requires the petition include
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`“(A) copies of patents and printed publications that the petitioner relies upon in
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`support of the petition; and (B) affidavits or declarations of supporting evidence
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`and opinions, if the petitioner relies on expert opinions,” i.e. copies of the
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`exhibits to the petition. Petitioner has admitted that the full set of exhibits was
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`not filed until December 3, 2015. Motion (Paper 9) at 4; ’077 Petition Filing
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`Receipt, Ex. 1023.
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`Additionally, 35 U.S.C. § 312(a)(5) requires service of the petition upon
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`Patent Owner, which again did not occur on December 2, 2015 by Petitioner’s
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`own admission. Motion (Paper 9) at 9-10; Screenshot of Federal Express
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`Tracking Data, Ex. 1024 (service initiated on December 3, 2015). Petitioner’s
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`argument that there is no express deadline for service identified in the statute is
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`incorrect, as the plain language of the statute makes clear that service is a
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`requirement for a petitioned to be “considered” as “filed.” 35 U.S.C. § 312(a).
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`These clear, indisputable failures to satisfy the statutory requirements of
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`35 U.S.C. § 312(a) by December 2, 2015 prevent Petitioner from obtaining a
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`December 2nd filing date. The Petition must not be instituted because it was not
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`filed within one year as required by Section 315(b).
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`Case IPR2016-00275
`Attorney Docket No: 12233-0046IP1
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`B.
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`Petitioner Failed to Satisfy its Burden to Identify Authority
`Allowing the Board to Grant an Earlier Filing Date and to
`Provide Sufficient Cause to Do So
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`Petitioner bore the burden on its Motion to establish both (1) that the
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`Board has authority to grant an earlier filing date; and (2) sufficient cause exists
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`to grant an earlier filing date. Petitioner failed to make either of these showings.
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`Petitioner relied exclusively on two regulations for the proposition that
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`the Board has authority to grant an earlier filing date, but neither regulation is
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`applicable here.2 37 C.F.R. § 42.5 only authorizes the Board to waive “a
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`requirement of parts 1, 41, and 42,” i.e. other aspects of the regulations
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`governing IPR proceedings. Petitioner’s failure here, however, is the failure to
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`satisfy the statutory criteria of 35 U.S.C. §§ 312(a) and 315(b), and thus 37
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`C.F.R. § 42.5 does not grant the Board any authority to grant an earlier filing
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`date. The only other regulation relied upon by petitioner – 37 C.F.R.
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`§ 42.104(c) – relates only to “a clerical or typographical mistake in the petition”
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`but not defects in the filing of the petition, much less defects caused by
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`2 Moreover, even if Petitioner could show that the regulations applied to the
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`facts surrounding its late filing of the Petition, no regulation can override a
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`statutory requirement, such as the requirements of 35 U.S.C. § 312(a) discussed
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`above. “When a regulation directly contradicts a statute, the regulation must
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`yield.” GHS Health Maintenance Organization, Inc. v. U.S., 536 F.3d 1293,
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`1297 (Fed. Cir. 2008).
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`Petitioner’s intentional decision to wait to the last minute to begin filing the
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`Petition. Further, this regulation is clear that “The grant of such a motion does
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`not change the filing date of the petition.” 37 C.F.R. § 42.104(c). Thus,
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`Petitioner has failed to identify any authority allowing the Board to grant a
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`filing date earlier than when the statutory requirements of 35 U.S.C. § 312(a)
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`were satisfied.
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`Each of the prior opinions of the Board relied upon by Petitioner is
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`readily distinguishable from the Petitioner’s Motion. ConMed Corp. v. Bonutti
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`Skeletal Innovations, LLC related to an inadvertent failure to click the “submit”
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`button. IPR2013-00624 (Paper 18, Feb. 21, 2014) at 2-6. However, all
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`documents in ConMed were uploaded and all documents were served timely
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`prior to the deadline. See Terremark at 11 (distinguishing ConMed). There was
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`no comparable failure to timely serve or failure to upload documents as there is
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`here.
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`Similarly, 2Wire, Inc. v. TQ Delta LLC also related to an inadvertent
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`failure to click the “submit” button. IPR2015-00239 (Paper 10, Jan. 15, 2015)
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`at 4-8. But again, 2Wire did not involve any other deficiencies because the
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`documents were fully uploaded and served timely. See Terremark at 12
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`(distinguishing 2Wire). Thus, 2Wire is also not comparable to the instant
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`Petition.
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`ABB Inc. v. Roy-G-Biv Corp. was a case involving an inadvertent failure
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`to file the correct exhibit. IPR2013-00063 (Paper 21, Jan. 16, 2013) at 2, 5-11.
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`However, as the Board has recognized, in ABB, the correct exhibit was timely
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`served and there was only a clerical error of uploading the incorrect document.
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`See Terremark at 12-13 (distinguishing ABB). Thus, ABB also does not excuse
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`Petitioner’s delay, partial uploading, and untimely service.
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`The only prior Board opinion which addresses a comparable situation is
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`Terremark. There, the petitioner made similar arguments as Petitioner makes
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`here and all were rejected by the Board. Similar to here, the petitioner in
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`Terremark alleged that PRPS was “apparently malfunctioning” based on the
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`fact that documents took time to upload and displayed a “pending” status during
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`that upload. Terremark at 8. The Board rejected that argument for numerous
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`reasons, including that the petitioner failed to show there were any errors with
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`PRPS as opposed to petitioner’s own computer or network. Id. Additionally,
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`the Board rejected this argument because even if there was a technical error in
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`uploading, that still fails to provide any justification for failing to timely serve
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`the patent owner. Id. Here too, Petitioner has failed to show that there were any
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`actual errors with PRPS and even if there were, it has also failed to offer any
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`justification for failing to timely serve Patent Owner. Thus, the Petition should
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`not be instituted.
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`Similar to this case, the petitioner in Terremark also voluntarily chose to
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`file multiple petitions in serial order, but again the Board noted that this
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`intentional decision by a petitioner does not justify granting a different filing
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`date. Terremark at 9.
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`Case IPR2016-00275
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`Petitioner’s argument that it could have hit submit before midnight
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`without all the exhibits and the petition would be considered timely (Motion
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`(Paper 9) at 8) is both without merit and irrelevant. The three cited cases
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`addressing incorrect exhibits each deals with inadvertent failure to file and/or
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`serve the correct exhibit, but in each case the exhibit was correctly identified in
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`the petition (Syntroleum) or timely served (ABB, Schott). See Terremark at 12-
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`13 (distinguishing Syntroleum, ABB, and Schott). Petitioner’s hypothetical is
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`also irrelevant, the Petitioner here did not hit submit before midnight, and just
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`as importantly, did not serve the petition before midnight which it could have
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`done irrespective of any alleged “technical” problems in uploading the
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`documents.
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`Finally, Petitioner’s argument that late service is excusable cannot stand.
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`Neither of the service related cases Petitioner cites relate to late filing of a
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`petition nor do they implicate any statutory deadlines like 35 U.S.C. § 315(b).
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`Those cases dealt with a patent owner’s response (CoreLogic) and a motion to
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`amend (Ricoh), neither of which implicate any statutory deadlines. Further,
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`CoreLogic, Inc. v. Boundary Solutions, Inc. granted the motion to allow the late
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`filing precisely because there was “essentially no prejudice.” IPR2015-00226
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`(Paper 34, Oct. 27, 2015) at 3. In contrast, granting Petitioner’s Motion here
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`would be highly prejudicial to Patent Owners by allowing Petitioner to
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`circumvent the statutorily-prescribed one-year deadline for filing petitions for
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`inter partes review.
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`Case IPR2016-00275
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`Petitioner failed to show any good cause for granting the Motion and
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`awarding Petitioner with an earlier filing date than it is entitled to under the
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`statutory regime established by Congress. Petitioner deliberately chose to wait
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`until the last moments of the last day to file the Petition. This decision is
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`particularly egregious in light of Petitioner’s apparent belief that multiple
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`petitions must be filed in serial (Ex. 1022, McCormack Decl., ¶ 4), which would
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`only extend the time for filing and suggest that an even earlier start is required.
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`Petitioner’s argument that it was waiting for potential changes in the
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`declaration is not a sufficient justification for excusing the late filing. By
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`waiting until the late minute for any such changes, Petitioner knowingly risked
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`not meeting the one year bar by not leaving enough time to complete filing and
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`service, much less enough time to do the multitude of tasks that would have
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`been required in the case of any changes (e.g., finalizing the changes to the
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`declarations, obtaining
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`the expert’s signature, making any necessary
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`corresponding changes to the petitions, filing the petitions, and serving the
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`petitions all in the one and a half hour window Petitioner left itself). The Board
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`should not now rescue Petitioner from the clearly foreseeable hazards of
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`delaying one's filing until the last moments of the last day.
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`V. THE BOARD SHOULD NOT INSTITUTE GROUNDS 1 AND 2,
`BECAUSE PETITIONER HAS FAILED TO PROVE THAT
`FREISHTAT IS PRIOR ART TO THE ’077 PATENT
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`Petitioner relies on Freishtat in Grounds 1 and 2 of the Petition, alleging
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`that Freishtat qualifies as prior art because it claims priority to a provisional
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`11
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`application that predates the ’077 Patent. Petition at 13-14. However,
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`Petitioner misstates the law regarding when a patent may claim the benefit of a
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`provisional application filing date, and then fails to provide any basis under the
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`correct legal standard that Freishtat actually qualifies as prior art to the ’077
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`Patent. Petitioner has therefore failed to establish as a threshold matter that
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`Freishtat qualifies as prior art, which is part of its burden in the Petition. Thus,
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`the Board should not institute on Grounds 1 and 2 of the Petition, because
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`Petitioner has not established a prior art date for the Freishtat reference prior to
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`the filing date of the ’077 Patent, as the Freishtat application was filed after the
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`filing date of the ’077 Patent.
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`The Federal Circuit recently (but several months prior to filing of the
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`Petition) issued an opinion reiterating the standard for when a patent is entitled
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`to claim priority to a provisional application, for the purpose of serving as a
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`prior art reference. The Federal Circuit identified the following test:
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`In other words, the specification of the provisional
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`must ‘contain a written description of the invention
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`and the manner and process of making and using it, in
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`such full, clear, concise, and exact terms,’ 35 U.S.C.
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`§ 112 ¶ 1, to enable an ordinarily skilled artisan to
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`practice the invention claimed in the non-provisional
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`application.
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`Dynamic Drinkware, LLC v. Nat’l Geographic, 800 F.3d 1375, 1378 (Fed. Cir.
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`2015) (emphasis in original). The test is focused on comparing the claims of
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`the later-issued patent to the specification of the provisional application.
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`Applying this test, the Federal Circuit upheld a final decision of the Board that
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`an IPR petitioner failed to prove invalidity precisely because the petitioner
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`failed to compare the claims of the later-issued patent to the provisional
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`application, and thus failed to show the reference actually qualified as prior art.
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`Id. at 1381-82.
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`Here, Petitioner failed to perform any analysis of the Freishtat patent
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`claims compared to the provisional specification (i.e., the correct standard)
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`and, as in Dynamic Drinkware, its Petition must fail. To the contrary, Petitioner
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`seeks to rely on In re Giacomini, which the Federal Circuit specifically
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`distinguished in Dynamic Drinkware, holding that “[b]ecause Giacomini
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`waived the argument that the Tran provisional application did not support the
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`Tran patent, we did not reach the question whether the Tran patent was
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`presumptively entitled to the benefit of the filing date of its provisional
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`application.” 800 F.3d at 1381 (emphasis added). In other words, In re
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`Giacomini (on which Petitioner entirely relies) was decided based on waiver
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`and is inapplicable here.3 Petitioner’s sole reliance on it for Grounds 1 and 2
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`make those grounds fundamentally untenable.
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`Nowhere does Petitioner ever compare the claims of Freishtat to the
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`disclosure of the provisional application, as required by the law. This is a
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`virtually identical situation to that in Dynamic Drinkware, where an IPR
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`petitioner only compared the claims of the challenged patent to the disclosure of
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`the provisional application. Dynamic Drinkware, 800 F.3d at 1381. But,
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`“[n]owhere, however, does [petitioner] demonstrate support in the [] provisional
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`application for the claims of the [alleged prior art] patent.” Id. at 1381-82.
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`Here too, just as in Dynamic Drinkware, Petitioner has failed to provide any
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`analysis supporting that the Freishtat patent actually qualifies as prior art. Thus,
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`the Petition should be denied. As the Board noted in IPR2015-00153, “A brief
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`must make all arguments accessible to the judges, rather than ask them to play
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`archaeologist with the record.” Paper 12, citing DeSilva v. DiLeonardi, 181 F.3d
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`865, 867 (7th Cir. 1999).
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`3 Moreover, even under Petitioner’s flawed reliance on In re Giacomini, the
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`single paragraph of the Petition focused on Freishtat’s priority date could not
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`establish priority. Petitioner provides merely conclusory statements of
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`“similarity” along with reference to Exhibit 1013, a purported redline that is
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`essentially unintelligible.
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`It is appropriate for the Board to deny institution for a proposed ground
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`when the petitioner fails to provide sufficient analysis supporting that an alleged
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`prior art reference was entitled to claim benefit to the filing date of a provisional
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`application to qualify as prior art. For example, in Securus Techs., Inc. v.
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`Global Tel*Link Corp., the Board denied institution because petitioner failed to
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`provide any analysis supporting that the alleged prior art reference was entitled
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`to claim priority to a provisional application. IPR2015-00153 (Paper 12, May
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`1, 2015) at 6. The Board explained that establishing priority is part of the
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`petitioner’s burden of proof in a petition. Id. at 6-7. Because the petitioner had
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`failed to make a sufficient showing of priority, the Board denied institution. Id.
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`at 8. Similarly, here the Petitioner has failed to make any showing under the
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`correct legal test for when a prior art reference is entitled to claim the priority
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`date of a provisional application, and thus Grounds 1 and 2 cannot be instituted.
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`VI. GROUND 3 SHOULD NOT BE INSTITUTED BECAUSE THE
`PRIOR ART DOES NOT DISCLOSE STORING
`INFORMATION/DATA SPECIFIC TO A PERSON
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`Independent claim 1 of the ’077 Patent requires an internet portal that
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`comprises “a list of addresses of Internet sites associated with a specific person,
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`which sites store information specific to the person.” Independent claim 7
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`recites “a method for gathering data specific to a person….” Neither of the
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`references cited in Ground 3 disclose these aspects of the claims. In fact,
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`nowhere in the Petition does Petitioner ever appear to even acknowledge the
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`“specific to the person” aspect of the claim. Instead, Petitioner merely repeats
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`the claim language, without ever identifying any “information specific to the
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`person” as required by the claims. Such conclusory allegations are insufficient
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`as a matter of law to prove obviousness under 35 U.S.C. § 103. See KSR Int’l
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`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (obviousness analysis “should be
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`made explicit. . . . ‘[R]ejections on obviousness grounds cannot be sustained by
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`mere conclusory statements; instead, there must be some articulated reasoning
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`with some rational underpinning
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`to support
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`the
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`legal conclusion of
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`obviousness.’”).
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`Petitioner’s specific failure to prove this element is discussed separately
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`below for each claim element in which these limitations are recited.
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`1.
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`[1.c]: a list of addresses of Internet sites associated with a
`specific person, which sites store information specific to
`the person
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`With respect to limitation [1.c], Petitioner fails to ever specifically
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`identify what allegedly discloses the “information specific to the person” aspe