UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FASTVDO LLC,
`Patent Owner.
`
`Case IPR2016-01203
`Patent No. 5,850,482
`
`PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER FASTVDO LLC’S REQUEST FOR
`REHEARING ON INSTITUTION DECISION
`
`la-1341882
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FASTVDO LLC,
`Patent Owner.
`
`Case IPR2016-01203
`Patent No. 5,850,482
`
`PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER FASTVDO LLC’S REQUEST FOR
`REHEARING ON INSTITUTION DECISION
`
`la-1341882
`
`
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`Inter Partes Review of USP 5,850,482
`
`Case IPR2016-01203
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`I.
`
`INTRODUCTION
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`As authorized by the Board in a February 22, 2017 email, Petitioner Apple
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`Inc. hereby opposes the request of Patent Owner FastVDO, LLC (“FastVDO”) to
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`rehear the Board’s Institution Decision. Petitioner complied with 37 C.F.R.
`
`§ 42.104(b)(3) by explicitly identifying the portion of the specification of the ’482
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`patent (i.e., Col. 16, lines 10-14) that arguably could be deemed structure for the
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`“error protection means” limitation of claims 7-11 and 22-26 of the ’482 patent.
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`Under the trial practice rules, “[w]hen rehearing a decision on petition, a
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`panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).
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`The Board did not abuse its discretion here. In addition to identifying the specific
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`portion of the specification that arguably described structure corresponding to the
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`claimed function as required by § 42.104(b)(3), Petitioner also argued that such
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`description was inadequate under 35 U.S.C. § 112, ¶ 6. Petitioner was not required
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`to concede that the specification adequately disclosed corresponding structure.
`
`That the Board appreciated the issue that FastVDO raised in its Preliminary
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`Response—and is now rearguing in its Request for Rehearing—is evidenced by its
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`considered analysis of this disputed means-plus-function limitation, which it
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`ultimately construed in the manner proposed by FastVDO. That the Board
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`disagreed that the reference in the specification to a textbook was inadequate does
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`not make the Petition defective, and Petitioner expressly recognized the possibility
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`Inter Partes Review of USP 5,850,482
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`Case IPR2016-01203
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`that the Board would so disagree. Petitioner met its obligation under the rule of
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`§ 42.104(b)(3), and rehearing of the Institution Decision should be denied.
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`II.
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`STATUS OF THIS PROCEEDING
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`On June 16, 2016, Petitioner filed a Petition for inter partes review of the
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`’482 patent (Paper 2). FastVDO filed its Preliminary Response on September 26,
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`2016 (Paper 10), and the Board instituted review of all challenged claims in a
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`December 16, 2016 Decision (Paper 14). On December 30, 2016, FastVDO filed a
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`Request for Rehearing with respect to claims 7-11 and 22-26 (Paper 16). FastVDO
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`specifically contends that Petitioner did not identify corresponding structure for the
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`“error protection means” of those claims, and that the “the Board overlooked
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`Petitioner’s failure to comply with 37 C.F.R. § 42.104(b)(3).” (Paper 16 at 2.)
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`FastVDO further contends that Petitioner’s “sole theory” was indefiniteness.
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`(Paper 16 at 1, 3.) As explained herein, the Board did not “overlook” a failure to
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`comply with § 42.104(b)(3), and indefiniteness was not Petitioner’s sole theory.
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`III. PETITIONER SATISIFED ITS DUTY UNDER § 42.104(B)(3)
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`As explained by the Federal Circuit, the construction of a “means-plus-
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`function” limitation requires (1) an identification of the claimed function and then
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`(2) a determination of the corresponding structure, if any exists:
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`Construing a means-plus-function claim term is a two-step process.
`The court must first identify the claimed function. [Citation omitted.]
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`Then, the court must determine what structure, if any, disclosed in
`the specification corresponds to the claimed function.
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (en banc)
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`(emphasis added). This standard was quoted by Petitioner (Petition at 9) and the
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`Board (Decision at 10), and was not challenged by FastVDO (with good reason).
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`Instead, FastVDO’s Request focuses on 37 C.F.R. § 42.104(b)(3), but the
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`language of that rule (set forth below) is entirely consistent with Williamson:
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`(3) How the challenged claim is to be construed. Where the claim to
`be construed contains a means-plus-function or step-plus-function
`limitation as permitted under 35 U.S.C. 112(f), the construction of the
`claim must identify the specific portions of the specification that
`describe the structure, material, or acts corresponding to each claimed
`function[.]
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`37 C.F.R. § 42.104(b)(3) (emphasis added). This rule does not require that a
`
`petitioner must concede that there is an adequate corresponding structure; rather, it
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`merely requires a petitioner to “identify the specific portions of the specification
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`that describe the structure, material, or acts corresponding to each claimed
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`function,” which was precisely what Petitioner here did in identifying what it saw
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`as the only portion of the ’482 specification that arguably describes the structure
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`corresponding to the claimed function of the “error protection means”:
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`… The specification does not disclose any structure for performing
`this [recited] function. (Lippman ¶62.)
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`Instead, the specification simply states that methods and
`apparatus for performing “unequal error protection” were “known
`to those skilled in the art” “as described, for example, in R. G.
`Gallager, ‘Information Theory and Reliable Communication’, Wiley
`and Sons (1968).” (’482, 16:10-14).
`
`(Petition at 9-10; emphasis added.)
`
` After satisfying the requirement of
`
`§ 42.104(b)(3) to “identify the specific portions of the specification [i.e., ’482,
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`16:10-14] that describe the structure … corresponding to each claimed function,”
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`Petitioner argued that such disclosure was inadequate. (Petition at 10.)
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`The rule cited by FastVDO requires no more, and the Federal Circuit’s
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`qualifier (“if any”) in Williamson confirms that construction of a means-plus-
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`function term may indeed result in a determination that there is no adequate
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`corresponding structure. Here, Petitioner explicitly identified the specific portion
`
`of the specification that describes the unequal error protection means.
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`That the Board disagreed with Petitioner and determined that the
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`specification “discloses enough of an algorithm to allow a person of ordinary skill
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`in the art to discern the necessary structure for performing the claimed function”
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`(see Decision at 10-12) does not translate to Petitioner having failed to identify “the
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`specific portions of the specification that describe the structure[.]” Petitioner
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`identified Col. 16, lines 10-14 and said it wasn’t enough—the Board identified the
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`same portion of the specification, along with the subsequent three sentences, and
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`decided it was enough.
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`(The District Court reached a similar conclusion when
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`construing this limitation (see Ex. 2003 at 27:9-30:22)).
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`The two-and-a-half page discussion of this “means” term in the Institution
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`Decision shows that the Board did not in any way “overlook” FastVDO’s very
`
`conspicuous discussion of this purported issue in its Preliminary Response. In
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`vetting the issue raised on pages 10-12 of FastVDO’s Preliminary Response, the
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`Board recognized that “Petitioner contends that the disclosure contained in the
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`specification for the claim term ‘error protection means’ is inadequate to provide
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`structure for this limitation.” (Decision at 11 (emphasis added), citing Petition at
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`10.) The Board did not state that Petitioner failed to identify any such disclosure.
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`FastVDO’s reference to IPR2013-00551 (Request at 3) is misleading. The
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`petition in IPR2013-00551 did not identify any portion of the specification for two
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`means-plus-function elements, stating only “None described.” (See id., paper 1 at
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`23-24.) Petitioner here complied with the rule by identifying Col. 16, lines 10-14.
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`Of course, if the Board had agreed with Petitioner that disclosure of the
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`Gallager textbook was inadequate under § 112, ¶ 6, such that the “error protection
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`means” limitation would be subject to a court finding of indefiniteness, then it
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`would have been incumbent upon the Board to deny review of claims 7-11 and 22-
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`26. FastVDO is correct that inter partes review cannot be predicated on
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`indefiniteness. (See Request at 3.) But that’s not what happened.
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`Inter Partes Review of USP 5,850,482
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`And contrary to what FastVDO is suggesting, Petitioner accounted for the
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`possibility that the Board would disagree with its positions that certain terms and
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`phrases that the parties agree are to be construed as “means-plus-function” terms
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`(such as “error protection means”) are indefinite for lacking an adequate
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`corresponding structure. At the end of Section V.B of the Petition (“Construction
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`of Means-Plus-Function Limitations”), Petitioner clearly stated as follows on p. 16:
`
`that numerous means-plus-
`Although Petitioner believes
`function claim elements are indefinite (for the reasons discussed
`above), the claims reciting them are nonetheless addressed below in
`the event that the Board disagrees.
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`This statement encompassed “error protection means.” Petitioner proceeded to
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`identify structure in the references which provide unequal error protection (Petition
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`at 20-21, 30, 39, 51-54, 57, 59, 61, 63), meeting the unequal error protection means
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`box 29 and the operation set forth at 16:10-14 (as well as 16:15-27).
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`Finally, in a misleading footnote, FastVDO first states that “[t]he phrase
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`‘error protection means’ does not appear at all in Ex. 1002, the Declaration of Dr.
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`Lippman.” (Request at 5, n.1). That much is true, but FastVDO then goes too far
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`in stating that Dr. Lippman “provides no opinion on this term.” (Id.) While his
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`declaration did not state “error protection means,” Dr. Lippman did opine on
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`whether the ’482 specification discloses sufficient structure for performing the
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`recited function of this means-plus-function term in Paragraph 62 of his
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`Declaration, in which he also identified 16:10-14 and its reference to the Gallager
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`textbook. (Ex. 1002, ¶ 62.) Thus, Dr. Lippman provided an opinion, and his
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`opinion was cited in Petitioner’s discussion of the construction of “error protection
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`means” to support the statement that “[t]he specification does not disclose any
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`structure for performing this function.” (Petition at 9-10, citing “Lippman ¶62.”)
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`Petitioner satisfied its duty of identification under § 42.104(b)(3).
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`IV. CONCLUSION
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`Petitioner met the requirement of identifying the portion of the specification
`
`that describes the structure of “error protection means.” That the Board disagreed
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`with Petitioner regarding the adequacy of that disclosure does not mean that the
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`Petition was itself inadequate. Patent Owner has not met its burden of showing an
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`abuse of discretion and rehearing should therefore be denied.
`
`Dated: March 7, 2017
`
`Respectfully submitted,
`
`By /David L. Fehrman/
`David L. Fehrman
`Registration No.: 28,600
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`P: (213) 892-5601
`F: (213) 892-5454
`Counsel for Petitioner Apple Inc.
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`Inter Partes Review of USP 5,850,482
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`I hereby certify that on March 7, 2017, a true and correct copy of the
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`foregoing Petitioner Apple Inc.’s Opposition to Patent Owner FastVDO LLC’s
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`Request for Rehearing on Institution Decision is being served electronically to
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`Petitioner’s below-listed counsel of record, pursuant to their consent, at their
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`respective email addresses:
`
`Wayne M. Helge, Esq. (whelge@dbjg.com)
`Walter D. Davis, Esq. (wdavis@dbjg.com)
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`
`By /David L. Fehrman/
`David L. Fehrman
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`la-1341882
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