UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`RUBICON COMMUNICATIONS, LP
`Petitioner,
`
`v.
`
`LEGO A/S
`Patent Owner.
`____________
`
`Case IPR2016-01187
`Patent 8,894,066
`____________
`
`
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION
`FOR OBSERVATIONS ON CROSS-EXAMINATION OF
`PETITIONER’S REPLY WITNESS
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`RUBICON COMMUNICATIONS, LP
`Petitioner,
`
`v.
`
`LEGO A/S
`Patent Owner.
`____________
`
`Case IPR2016-01187
`Patent 8,894,066
`____________
`
`
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION
`FOR OBSERVATIONS ON CROSS-EXAMINATION OF
`PETITIONER’S REPLY WITNESS
`
`
`
`
`
`Petitioner respectfully submits this Response to Patent Owner’s Motion for
`
`Observations on Cross-Examination of Petitioner’s Reply Witness (the “Motion”),
`
`Dr. Jay P. Kesan. All page and line references are to Exhibit 2030.
`
`Observations 1-5
`
`
`
`At ¶¶ 1-5 of the Motion, Patent Owner cites portions of Dr. Kesan’s
`
`testimony regarding his educational and professional background, and concludes
`
`that these observations are relevant “because Dr. Kesan’s educational background
`
`and qualifications are inconsistent with the uncontested definition of a person of
`
`ordinary skill in the art as of the time of the invention.” These observations are not
`
`relevant, because they do not account for Dr. Kesan’s testimony at page 83, line 21
`
`– page 84, line 4 and page 84, line 20 – page 85, line 1, which reads (emphasis
`
`added):
`
`Q: . . . And by common knowledge of one of ordinary skill,
`
`you’re referring to the skill that you possess as one in the art?
`
`A. No. I mean, I’m just looking at it as somebody who has
`
`some knowledge, probably has a Bachelor’s degree in engineering.
`
`
`
`* * *
`
`A. But at the same time, this is not complicated technology,
`
`and a person with an engineering degree and a couple of years of
`work experience should be able to – would be the person of ordinary
`skill in the art.
`
`1
`
`
`
`That is, Dr. Kesan provided further testimony clarifying his earlier position on the
`
`level of ordinary skill, rendering it no longer “uncontested.”
`
`Observation 10
`
`
`
`At ¶ 10 of the Motion, regarding “changing,” Patent Owner cites Dr.
`
`Kesan’s testimony concerning “moving those symbols and images on the display,”
`
`concluding
`
`this
`
`testimony
`
`is relevant “because
`
`it concerns Dr. Kesan’s
`
`understanding of the term ‘manipulate.’” This observation is not relevant, because
`
`it fails to account for Dr. Kesan’s testimony at p. 31, lines 18-19 that further relates
`
`to his understanding of the term “manipulate”:
`
`
`
`
`
`Q. Manipulate includes removing entirely?
`
`A. I suppose it could.
`
`That is, Dr. Kesan’s full testimony indicates that his understanding of “manipulate”
`
`is not limited to “moving those symbols and images on the display.”
`
`Observation 11
`
`
`
`At ¶ 11 of the Motion, Patent Owner cites Dr. Kesan’s answer of “No, I
`
`didn’t” to the question “Did you rely on the petition in forming your opinion?”,
`
`contrasts this to Dr. Kesan’s Declaration in which he states he considered the
`
`Petition, and concludes that the testimony is relevant “because it explains new
`
`arguments not previously raised in the Petition.” This observation is not relevant
`
`to the extent that it takes Dr. Kesan’s answer out of context and suggests a
`
`2
`
`
`
`contradiction in his testimony that does not exist. Dr. Kesan’s full answer at page
`
`46, lines 2-5, was:
`
`A. No, I didn’t. I was really focused on responding to the
`
`patent owner’s response, the declaration of Ms. Elizabeth Knight, and
`PTAB’s institution decision.
`
`That is, whether Dr. Kesan relied on the Petition, as questioned, is distinct from
`
`whether Dr. Kesan considered the Petition, as stated in his Declaration.
`
`Observation 12
`
`
`
`At ¶ 12 of the Motion, concerning the question of whether the examples of
`
`the ’066 Patent supported the term “portion” meaning an entirety, Patent Owner
`
`cites Dr. Kesan’s answer of “Not that I recall, but it certainly doesn’t exclude it,”
`
`concluding that the testimony is relevant because it “concerns Dr. Kesan’s
`
`understanding of the term ‘portion.’” This observation is not relevant, because it
`
`does not account for Dr. Kesan’s testimony at page 98, line 15 – page 99, line 10:
`
`Q. Can you explain to us your opinion with respect to how the word
`“comprising” in the claims affects a portion?
`
`A. Right. As I mentioned in my declaration, you know, the – it’s my
`understanding that when a claim uses the term “comprising,” then that
`is considered to be open-ended language. And so if we say that the
`casing conformably fits around a portion of the housing, then it has to
`conformably fit around at least a portion of the housing, but it could
`be more because of the open-ended language “comprising.”
`
`3
`
`
`
`Q.· ·And there's also been some discussion about how the figures in
`the '066 patent might impact the term “portion.”· What is your opinion
`on that?
`
`·A.· ·It’s my understanding that examples in a patent are there to
`illustrate the invention, and the claims are not limited to those specific
`examples.· They could be broader.
`
`Observations 16, 19
`
`
`
`At ¶ 16 of the Motion, Patent Owner cites the question “Is there anything in
`
`the disclosure of Philo that would suggest grasping Brick Simon by the stand?” and
`
`Dr. Kesan’s answer of “I mean, not that I recall, but it’s clear that those structural
`
`features are disclosed, and they allow the Brick Simon to be grasped.” At ¶ 19 of
`
`the Motion, Patent Owner cites similar testimony concerning whether Brick Simon
`
`affirmatively discloses “grasping.” Patent Owner asserts that these portions of
`
`testimony are relevant because they “admit[] that Philo does not disclose a ‘hand
`
`grip section.’” Petitioner submits that these observations are not relevant because
`
`the conclusion does not follow. Observing that the specific action of “grasping” is
`
`not affirmatively disclosed is not an admission that a structure (i.e., “hand grip
`
`section”) capable of being grasped is absent, and Dr. Kesan specifically identified
`
`those structural features of Brick Simon that are capable of being grasped.
`
`
`
`
`
`4
`
`
`
`Observation 17
`
`
`
`At ¶ 17 of the Motion, Patent Owner cites Dr. Kesan’s statement “Yeah, I
`
`haven’t compared this declaration of mine to the original petition,” contrasts this to
`
`Dr. Kesan’s Declaration in which he states he considered the Petition, and
`
`concludes that the testimony is relevant “because it explains new arguments not
`
`previously raised in the Petition.” This observation is not relevant to the extent
`
`that it takes Dr. Kesan’s answer out of context and suggests a contradiction in his
`
`testimony that does not exist. Dr. Kesan’s full answer at page 46, lines 2-5, was:
`
`Q. . . . That intrinsic argument, do you know if that appeared in
`
`the regular petition?
`
`A. Oh. Yeah, I haven’t compared this declaration of mine to
`the original petition. Like I said, I was focused on responding to the
`patent owner’s response[,] to the declaration of Ms. Elizabeth Knight
`and the PTAB institution decision.
`
`That is, whether or not Dr. Kesan “compared” his Declaration to the petition is
`
`distinct from whether Dr. Kesan considered the Petition, as stated in his
`
`Declaration. Dr. Kesan never stated that he did not consider the Petition, but rather
`
`emphasized that his opinion was primarily focused upon the documents he
`
`referenced.
`
`
`
`
`
`5
`
`
`
`Observation 18
`
`
`
`At ¶ 18 of the Motion, Patent Owner notes that “when asked whether the
`
`witness took a position as to the knowledge of one of ordinary skill in the art,” Dr.
`
`Kesan replied, “It may be a point I did not contest. In other words, it may have
`
`been a point that I was in agreement with the patent owner.” Patent Owner
`
`concludes that the testimony is relevant “because it concerns the level of one of
`
`ordinary skill in the art.” The observation is not relevant because it does not
`
`account for the fact that—although Dr. Kesan may not have contested Patent
`
`Owner’s position in his Declaration—upon cross-examination, Dr. Kesan provided
`
`further testimony that “a person with an engineering degree and a couple of years
`
`of work experience should be able to – would be the person of ordinary skill in the
`
`art,” thereby clarifying his prior position. See page 84, line 20 – page 85, line 1
`
`and discussion of Observations 1-5 above.
`
`Observation 20
`
`
`
`At ¶ 20 of the Motion, Patent Owner cites Dr. Kesan’s statement that “as a
`
`person of ordinary skill in the art, I know what infrared communications is and
`
`what it’s used for and how that works” and concludes that this testimony is
`
`relevant “because it applies knowledge of a skilled artisan that is inconsistent with
`
`the uncontested definition of a person of ordinary skill in the art.” This
`
`observation is not relevant because it takes Dr. Kesan’s answer out of context and
`
`6
`
`
`
`does not account for his additional testimony concerning the level of ordinary skill
`
`discussed with respect to Observations 1-5 and 18. Dr. Kesan’s answer in context
`
`appears at page 73, lines 13-21:
`
`Q. Do you know how infrared communication was used in the
`
`palmOne Treo?
`
`A. I don’t know how it was used specifically, but I’m just – as
`a person of ordinary skill in the art, I know what infrared
`communications is and what it’s used for and how that works. So I
`can imagine that that is similar infrared communications in the
`palmOne Treo, that it’s basically for beaming information and
`software between devices.
`
`That is, Dr. Kesan was asked about his knowledge concerning the operation of
`
`infrared communications in the palmOne Treo, and answered from his own
`
`knowledge of that field. He was not asked to state his answer from the perspective
`
`of one of ordinary skill in the art of the ’066 Patent. Moreover, as noted above
`
`with respect to Observations 1-5 and 18, Dr. Kesan clarified his position
`
`concerning the level of ordinary skill, rendering it no longer “uncontested.”
`
`Observations 21, 23
`
`
`
`At ¶¶ 21 and 23 of the Motion, Patent Owner cites Dr. Kesan’s testimony
`
`relating to “receiving” of infrared signals in response to the questions “And in
`
`addition to receiving the IR signals, you would have to be able to interpret that
`
`7
`
`
`
`signal?” and “Provided those devices are adapted to receive and interpret those
`
`signals. Isn’t that correct?” at page 75, lines 12-13 and page 77, lines 9-10. Patent
`
`Owner concluded that Dr. Kesan’s answers were relevant because they “concern[]
`
`what is required to combined a cellular telephone and cited references.” The
`
`observations are not relevant because they do not account for Dr. Kesan’s
`
`testimony at page 78, lines 9-14 (emphasis added):
`
`There is clear language in the RCX Chapter 6 -- Building Robots
`book, Chapter 6 is programming the RCX, and it talks about how you
`can transfer to the RCX brick, with the help of an IR link, some
`software, and the RCX brick will receive and execute the software.·
`
`That is, Dr. Kesan testified that the receiving capability is already performed by the
`
`RCX brick, and therefore not an aspect of the references that would need to be
`
`modified in order to combine the references.
`
`Observation 22
`
`
`
`At ¶ 22 of the Motion, Patent Owner notes that when asked “Is there any
`
`indication that this device could communicate with anything other than another
`
`palmOne Treo,” Dr. Kesan responded “I don’t think that is discussed in this
`
`document, but it doesn’t limit it that way.” Patent Owner concludes that this
`
`testimony is relevant “because it admits that Ex. 1043 does not disclose how to
`
`combine a cellular telephone with other devices.” This observation is not relevant
`
`because it does not account for Dr. Kesan’s testimony at page 79, lines 8-10, in
`
`8
`
`
`
`response to a question regarding modification of the palmOne Treo: “[T]his is old
`
`technology. I mean, I think, you know, a person of ordinary skill in the art would
`
`understand how to set up an IR link and how to use it.” That is, Dr. Kesan testified
`
`that any necessary modifications were within the capabilities of one of ordinary
`
`skill in the art.
`
`Observation 24
`
`
`
`At ¶ 24 of the Motion, Patent Owner cites Dr. Kesan’s statement “So I don’t
`
`recall specifically seeing infrared communications being used to manipulate
`
`images, but using infrared communications to manipulate images is not required by
`
`the claim.” Patent Owner states that this testimony “relates to Petitioner’s position
`
`that combining Philo, Building Robots, and a cellular telephone renders obvious
`
`Claim 1, stated on pages 18-19 of the Reply” (emphasis added). Patent Owner
`
`concludes that the testimony is relevant “because it concerns Claim 1 from which
`
`Claim 7 depends.” This observation is not relevant, because contrary to Patent
`
`Owner’s contention, Petitioner never asserted that the combination of references
`
`renders obvious claim 1, which does not recite a cellular telephone.
`
`Observations 25-26
`
`
`
`At ¶¶ 25-26 of the Motion, Patent Owner cites Dr. Kesan’s answers to
`
`questions regarding “other cell phones that use IR communications” and who
`
`located the palmOne Treo reference. Patent Owner states that the testimony relates
`
`9
`
`
`
`to paragraphs 65 and 67 of Dr. Kesan’s Declaration, and asserts that the testimony
`
`is relevant “because it contradicts the assertion that IR communication’s use in
`
`cellular telephone devices was widespread.” The observations are not relevant
`
`because they are directed to an assertion Dr. Kesan did not make (i.e., a strawman):
`
`Dr. Kesan did not state that “IR communication’s use in cellular telephone devices
`
`was widespread.”
`
` Rather, he stated, “Given
`
`the ubiquity of
`
`infrared
`
`communication and widespread knowledge of its use in cellular telephone devices
`
`at the time of invention of the ’066 Patent, it is my opinion that . . .” Exh. 1036 at ¶
`
`65 (emphasis added). That is, Dr. Kesan did not testify that the use of IR in cellular
`
`telephone device was “widespread,” but rather that the knowledge that one could do
`
`so was “widespread.”
`
`Observations 27-28
`
`
`
`At ¶¶ 27-28 of the Motion, Patent Owner cites Dr. Kesan’s testimony
`
`concerning the person of ordinary skill being “somebody who has some
`
`knowledge, probably has a Bachelor’s degree in engineering” and “an engineering
`
`degree and a couple of years of work experience.” Patent Owner asserts that the
`
`testimony is relevant because “Dr. Kesan states qualifications of one of ordinary
`
`skill in the art that [are] inconsistent with the uncontested definition of a person of
`
`ordinary skill in the art.” These observations are not relevant, because as noted
`
`above with respect to Observations 1-5 and 18, in response to questioning by
`
`10
`
`
`
`Patent Owner, Dr. Kesan’s further testimony clarified his prior testimony regarding
`
`the level of ordinary skill.
`
`Observations 29-30
`
`
`
`At ¶¶ 29-30 of the Motion, Patent Owner cites Dr. Kesan’s statement that
`
`“it’s surrounded on all sides by the casing” and “the word ‘portion’ simply means
`
`some percentage that’s, you know, more than zero and extending to 100.” Patent
`
`Owner asserts that the testimony is relevant because it “concerns Dr. Kesan’s
`
`understanding of the term ‘portion.’” The observations are not relevant because
`
`they do not account for Dr. Kesan’s additional testimony regarding the term
`
`“portion” cited above with respect to Observation 12.
`
`Observation 31
`
`
`
`At ¶ 31 of the Motion, Patent Owner cites Dr. Kesan’s testimony that in the
`
`examples given in the ’066 Patent, the “portions” shown “were less than 100
`
`percent,” and asserts that this testimony is relevant “because it indicates the lack of
`
`basis for Dr. Kesan’s broad definition of the term ‘portion.’” This observation is
`
`not relevant because it does not account for Dr. Kesan’s testimony at page 99, lines
`
`4-10:
`
`Q.· ·And there's also been some discussion about how the figures in
`the '066 patent might impact the term “portion.”· What is your opinion
`on that?
`
`11
`
`
`
`·A.· ·It’s my understanding that examples in a patent are there to
`illustrate the invention, and the claims are not limited to those specific
`examples.· They could be broader.
`
`That is, Dr. Kesan plainly testified to his understanding that the illustrated
`
`examples do not limit the scope of the claims.
`
`Observation 33
`
`
`
`At ¶ 33 of the Motion, Patent Owner cites Dr. Kesan’s testimony that “the
`
`casing and the housing conformably fit in Anderson, just like the casing and the
`
`housing conformably fit in the ’066 patent” and asserts that the testimony is
`
`relevant “because it concerns FIG. 4 of Anderson.” The observation is not relevant
`
`because it omits Dr. Kesan’s further testimony at page 91, line 20 – page 92, line
`
`11:
`
`Q.· ·Well, it says, “At least to the same extent as the ’066 patent.”
`A.· ·Yeah.· And I'm just talking about the goodness of the fit, if you
`will.· That's what I mean by, you know, conformably fits, to the -- at
`least the same extent.
`·Q.· ·So you weren't talking about the completeness of the fit?
`·A.· ·Right.· You know, I've discussed that issue of, you know, what
`is a portion earlier.· I'm just simply saying here that, you know,
`they're -- the casing and the housing may be separate and distinct, but
`they conformably fit just like what is shown in the ’066 patent.
`
`12
`
`
`
`That is, Dr. Kesan testified that his reference to Anderson conformably fitting “at
`
`least to the same extent” as the ’066 Patent referred to the quality or “goodness” of
`
`the fit, rather than its extent or “completeness.”
`
`Observation 36
`
`
`
`At ¶ 36 of the Motion, Patent Owner cites Dr. Kesan’s testimony that “the
`
`reference itself does not say, yes, you can replace the computer with a cell phone,
`
`but it doesn’t need to. You know, a person of ordinary skill in the art would
`
`understand that.” Patent Owner asserts that this testimony is relevant “because Dr.
`
`Kesan admits that Ex. 1043 does not disclose how to combine a cellular telephone
`
`with other devices and applies knowledge of a skilled artisan inconsistent with the
`
`uncontested definition of a person of ordinary skill in the art.” This observation is
`
`not relevant, because as noted above with respect to Observations 1-5, 18, 27, and
`
`28, Dr. Kesan provided further testimony in response to Patent Owner’s
`
`questioning that clarified his prior testimony concerning the level of ordinary skill,
`
`rendering it no longer “uncontested.” Moreover, Dr. Kesan testified that
`
`notwithstanding a lack of explicit disclosure in Ex. 1043, “replac[ing] the computer
`
`with a cell phone” was within the level of ordinary skill.
`
`Date: October 6, 2017
`
`
`
`
`
`Respectfully submitted,
`
`/ Anthony M. Petro /
`Anthony M. Petro (Reg. No. 59,391)
`
`13
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on October 6,
`2017 a complete and entire copy of Petitioner’s Response To Patent Owner’s
`Motion for Observations on Cross-Examination of Petitioner’s Reply Witness was
`provided via Federal Express Standard Overnight, to the Patent Owner by serving
`the correspondence address of record as follows:
`Andrew M. Riddles
`Elizabeth A. Alquist
`Howard Grossman
`Day Pitney LLP
`7 Times Square
`New York, NY 10036
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Anthony M. Petro /
`Anthony M. Petro
`Reg. No. 59,391
`tpetro@intprop.com
`MEYERTONS, HOOD,
`KIVLIN, KOWERT &
`GOETZEL
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`(512) 853-8883
`
`
`
`
`
`
`
`
`
`
`
`14
`
`
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