`Filed on behalf of Intel Corporation
`By: Grant K. Rowan, Reg. No. 41,278 (Lead Counsel)
`Yung-Hoon Ha, Reg. No. 56,368 (Back-up Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`Tel: (202) 663-6025
`Email: Grant.Rowan@wilmerhale.com
`
` Yung-Hoon.Ha@wilmerhale.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`INTEL CORPORATION
`
`Petitioner
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.
`
`Patent Owner of
`
`U.S. Patent No. 5,965,924
`
`IPR Trial No. IPR2016-00290
`
`PETITIONER’S REPLY
`
`Claims 7-12, 15 and 17
`
`
`
`
`
`
`
`Trial No. IPR2016-00290
`Docket No. 0107131-00351US2
`TABLE OF AUTHORITIES
`
`
`CASES
`In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) ....................... 1
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`Page(s)
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`i
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`Trial No. IPR2016-00290
`Docket No. 0107131-00351US2
`In its Decision on Institution, the Board recognized that, for the reasons
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`
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`described in the Petition and the accompanying declaration of Dr. John C.
`
`Bravman (Ex. 1102), there is a reasonable likelihood that Petitioner Intel
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`Corporation (“Intel”) has met its burden showing that the challenged claims 7-12,
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`15 and 17 are unpatentable.
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`In response, Patent Owner DSS Technology Management, Inc. (“DSS”) did
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`not identify any basis that the challenged claims are patentable. DSS did not
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`depose Dr. Bravman, did not provide any contradictory testimony from any expert,
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`and did not otherwise submit or identify any evidence rebutting Intel’s petition.
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`Instead , DSS merely offered the unremarkable observation that the burden of
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`proving unpatentability remains with Intel. DSS Resp. at 2.
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`The Federal Circuit has advised that “while the institution of an IPR does not
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`by itself translate to a conclusion of unpatentability and the patent owner is not
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`required to use its opportunity under the regulations to file a patent owner
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`response, as in district court validity challenges, the patent owner would be well
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`advised to introduce evidence on the asserted challenge.” In re: Magnum Oil
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`Tools Int’l, Ltd., 829 F.3d 1364 at 1377 n. 1 (Fed. Cir. 2016) (nonprecedential)
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`(internal quotations omitted). DSS appears to have rejected that advice.
`
`The Board correctly found that there was a reasonable likelihood that the
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`claims are unpatentable. DSS has presented no argument or evidence to change
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`1
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`Trial No. IPR2016-00290
`Docket No. 0107131-00351US2
`that conclusion. As set forth in the Petition and the supporting declaration, claims
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`
`
`Respectfully submitted,
`
`/Grant K. Rowan /
`Grant K. Rowan
`Registration No. 41,278
`WILMER CUTLER PICKERING HALE
`AND DORR LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Grant.Rowan@wilmerhale.com
`Tel.: 202-663-6000
`
`7-12, 15 and 17 are unpatentable.
`
`
`
`Dated: December 7, 2016
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`2
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`
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`Trial No. IPR2016-00290
`Docket No. 0107131-00351US2
`
`
`WORD COUNT CERTIFICATE OF COMPLIANCE
`
` hereby certify that the foregoing, Petitioner’s Reply, contains 253 words as
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`
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` I
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`measured by the word processing software used to prepare the document, in
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`compliance with 37 C.F.R. § 42.24 (d).
`
`
`
`Dated: December 7, 2016
`
`Respectfully submitted,
`
`
`
`
`/Yung-Hoon Ha /
`Yung-Hoon Ha
`Registration No. 56,368
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`
`
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`3
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`Trial No. IPR2016-00290
`Docket No. 0107131-00351US2
`
`
`CERTIFICATE OF SERVICE
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`I hereby certify that, on December 7, 2016, I caused a true and correct copy
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`of the foregoing materials:
`
` Petitioner’s Reply
`
` Word Count Certificate of Compliance
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`to be served via email, as previously agreed between the parties, on the following
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`counsel of record for Patent Owner:
`
`SMITH & HOPEN, P.A.
`180 Pine Avenue North
`Oldsmar, FL 34677
`Tel.: 813-925-8505
`
`
`Andriy Lytvyn, Lead Counsel
`USPTO Reg. No. 65,166
`andriy.lytvyn@smithhopen.com
`
`Anton J. Hopen, Backup Counsel
`USPTO Reg. No. 41,849
`anton.hopen@smithhopen.com
`
`Nicholas Pfeifer, Backup Counsel
`USPTO Reg. No. 70,568
`nicholas.pfeifer@smithhopen.com
`
`
`/Yung-Hoon Ha /
`Yung-Hoon Ha
`Registration No. 56,368
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`
`
`
`4
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