Filed: November 25, 2016
`
`Megan Lyman (Reg. No. 57,054)
`Lyman Patent Services
`1816 Silver Mist Ct.
`Raleigh, NC 27613
`Tel: (919) 341-4023
`Fax: (919) 341-0271
`melyman@lymanpatents.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`ONE-E-WAY, INC.
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`
`
`
`
`
`
`
`PATENT OWNER ONE-E-WAY’S PRELIMINARY RESPONSE TO
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`Megan Lyman (Reg. No. 57,054)
`Lyman Patent Services
`1816 Silver Mist Ct.
`Raleigh, NC 27613
`Tel: (919) 341-4023
`Fax: (919) 341-0271
`melyman@lymanpatents.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`ONE-E-WAY, INC.
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`
`
`
`
`
`
`
`PATENT OWNER ONE-E-WAY’S PRELIMINARY RESPONSE TO
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .................................................................................................. 1
`
`II. PETITIONER’S FACTUAL BACKGROUND ................................................... 2
`
`III. PETITIONER’S DISCUSSION OF THE CHALLENGED
`’396 PATENT .................................................................................................. 3
`
`IV. THE PETITION IS FUTILE BECAUSE THE ’396 PATENT
`CLAIMS HAVE A 2001 PRIORITY DATE .................................................. 4
`
`A. A Patent Owner May Properly Incorporate an Earlier
`Application Prior to Abandonment or Issuance of a
`CIP Application ..................................................................................... 4
`
`1.
`
`2.
`
`3.
`
`In re Reiffin ................................................................................. 6
`
`Litton v. Whirlpool ...................................................................... 8
`
`Harari v. Hollmer ..................................................................... 10
`
`B.
`
`Patent Owner’s Incorporation of its Earlier
`Application Maintained Continuity of Disclosure
`Back to the 2001 Application .............................................................. 11
`
`C.
`
`The Petition Fails ................................................................................. 14
`
`V. CONCLUSION ................................................................................................... 15
`
`
`
`i
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Dart Indus., Inc. v. Banner,
`636 F2d 684 (D.C. Cir. 1980) ........................................................................ 14
`
`Harari v. Hollmer,
`602 F.3d 1348 (Fed. Cir. 2010) ......................................................... 10, 11, 13
`
`Litton v. Whirlpool,
`728 F.2d 1423 (Fed. Cir. 1984) ....................................................... 8, 9, 11, 13
`
`Ex parte Reiffin,
`App. No. 2007-2127, 2007 WL 2814119
`(BPAI Sept. 25, 2007) ........................................................................... 6, 7, 14
`
`In re Reiffin,
`340 Fed. Appx. 651, 2009 WL 2222341
`(Fed. Cir. July 27, 2009) .............................................................. 6, 7, 8, 13, 14
`
`Other Authorities
`
`35 U.S.C. § 103 ...................................................................................................... 1, 2
`
`35 U.S.C. § 120 .................................................................................................... 4, 14
`
`35 U.S.C. § 132 .................................................................................................... 7, 12
`
`37 C.F.R. §108(c) ....................................................................................................... 1
`
`37 C.F.R. § 1.53(b) .................................................................................................. 11
`
`MPEP § 201.02 ........................................................................................................ 12
`
`MPEP § 201.06 ........................................................................................................ 12
`
`MPEP § 201.06(c)(IV) ....................................................................................... 12, 14
`
`MPEP § 201.07 ........................................................................................................ 11
`
`MPEP § 201.08 ........................................................................................................ 12
`
`ii
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`I. INTRODUCTION
`Petitioner fails to present any reasonable likelihood that at least one of the
`
`claims challenged in the petition is unpatentable, thus, the petition should be
`
`denied. 37 C.F.R. §108(c).
`
`Petitioner presents a single ground for invalidity of U.S. Patent No.
`
`9,282,396 (the ’396 patent). Pet. 2. That sole ground is that the ’396 patent is
`
`obvious under 35 U.S.C. § 103 in view of Patent Owner One-E-Way, Inc.’s own
`
`earlier publication (the ’196 publication) of its 2001 application. Id. Petitioner
`
`argues that a break in the continuity of Patent Owner’s chain of co-pending
`
`applications precludes the ’396 patent from claiming priority to the 2001
`
`application and thus avoiding the ‘196 publication as prior art. Pet. 9, 13-19.
`
`Petitioner argues that the alleged break in continuity occurred in Patent
`
`Owner’s 2003 continuation-in-part (CIP) application (the ’012 application). Id.
`
`Petitioner alleges that continuity of disclosure was broken because Patent Owner
`
`did not incorporate by reference the disclosure of the 2001 parent application when
`
`the 2003 CIP application was initially filed. Id.
`
`As explained below, well-settled Board and Federal Circuit decisions make
`
`clear that a CIP application may be amended prior to abandonment or issuance to
`
`incorporate by reference material from a parent application. Such an amendment is
`
`entirely proper because subject matter is not “new matter” in a CIP if it derives
`
`
`
`1
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`from a parent application. Thus, because Patent Owner properly incorporated its
`
`2001 application before the 2003 application issued, there was never any break in
`
`continuity of disclosure as alleged by Petitioner.
`
`When the Board reviews the petition and this preliminary response, the only
`
`conclusion to be made is that the ’396 Patent has priority dating back to the 2001
`
`application, and thus the ’196 publication, which published from the 2001
`
`application, is not prior art under 35 U.S.C. § 103. As such, Petitioner’s sole
`
`ground for invalidity must be rejected, and the Board should deny the Petition.
`
`II. PETITIONER’S FACTUAL BACKGROUND
`For purposes of this Response, Patent Owner does not dispute the
`
`description regarding the ’396 Patent, or the facts regarding the prosecution history
`
`of the ’396 Patent, as set forth in the “Factual Background” section of the Petition.
`
`Pet. 2-7. Also, Patent Owner does not dispute Petitioner’s figure showing the ‘396
`
`patent’s chain of priority back to the original 2001 application, which is set forth
`
`below:
`
`
`
`2
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`
`
`With regard to footnote 2 on page 7 of the Petition, Patent Owner notes that
`
`the Petition for Unintentional Delayed Claim of Priority was granted on August 24,
`
`2016, with a Certificate of Correction issuing on October 8, 2016.
`
`III. PETITIONER’S DISCUSSION OF THE CHALLENGED ’396
`PATENT
`
`For purposes of this Petition, Patent Owner does not contest the four
`
`proposed claim constructions, or the level of skill in the art, proposed by Petitioner
`
`in the section titled “The Challenged ’396 Patent.” Pet. 7-8.
`
`
`
`3
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`IV. THE PETITION IS FUTILE BECAUSE THE ’396 PATENT
`CLAIMS HAVE A 2001 PRIORITY DATE
`
`The Petition suffers a fundamental flaw that renders it futile. Petitioner
`
`incorrectly argues that Patent Owner’s amendment to incorporate by reference
`
`Patent Owner’s original 2001 application in its 2003 CIP application was improper
`
`and cannot support a claim of priority back to 2001. Pet. 9-10. On the contrary,
`
`decisions from the Board and Federal Circuit directly addressing the issue—which
`
`Petitioner ignores—establish that subject matter from a parent application may be
`
`incorporated into a CIP application by amendment prior to issuance or
`
`abandonment of the CIP application. The Federal Circuit has made clear that such
`
`an amendment is proper because the incorporated subject matter does not
`
`constitute new matter, and the continuity of disclosure is maintained.
`
`Thus, the Petition is based entirely upon the false premise that Patent
`
`Owner’s incorporation by reference is invalid. Consequently, Petitioner’s
`
`obviousness argument necessarily fails because the ’196 publication is not prior art
`
`to the ’396 patent, rendering the Petition futile.
`
`A. A Patent Owner May Properly Incorporate an Earlier Application
`Prior to Abandonment or Issuance of a CIP Application
`
`Petitioner does not dispute that Patent Owner made proper priority claims
`
`under 35 U.S.C. § 120 for every application in the chain from the ’396 patent to
`
`Patent Owner’s original 2001 application. Pet. 9 (“Each application in the ’396
`
`
`
`4
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`patent family claims priority to the prior applications in the chain.”). Instead,
`
`Petitioner alleges that Patent Owner broke the “chain of disclosure” needed to
`
`support the ’396 patent claims. Id. Specifically, Petitioner argues that Patent
`
`Owner broke the chain of disclosure when it filed a CIP application in 2003
`
`because that application “did not include or incorporate by reference the disclosure
`
`of the earlier 2001 application . . ..” Id.
`
`However, Petitioner acknowledges that, while the 2003 application was still
`
`pending, Patent Owner amended the specification to incorporate by reference the
`
`entirety of the parent 2001 application. Pet. 16-17 (citing Ex. 1005 – 0375). That
`
`amendment appears as follows:
`
`Ex. 1005 – 0375. While the examiner made other new matter rejections in
`
`connection with other amendments submitted by Patent Owner at the same time,
`
`the examiner did not issue a new matter rejection for this incorporation by
`
`
`
`reference statement. Id. at 0477.
`
`
`
`5
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`Importantly, decisions from the Board and Federal Circuit outlined in the
`
`following sections demonstrate that this amendment was proper and effective to
`
`maintain continuity of disclosure to support the ‘396 patent claims back to the
`
`filing date of the original 2001 application.
`
`1.
`In re Reiffin
`In In re Reiffin, 340 Fed. Appx. 651, 658, 2009 WL 2222341 (Fed. Cir. July
`
`27, 2009), the Federal Circuit considered a patent owner’s appeal from the Board
`
`rejecting claims under reexamination. Reiffin, 340 Fed. Appx. at *652. In the
`
`Board’s decision below, it had rejected a group of claims directed to spell-checking
`
`and grammar-checking functions in computer software programs as lacking written
`
`description support. Id. at 658. The patentee had arguably included written
`
`description support for this claimed subject matter in a parent application, but had
`
`omitted it from the application that led to the patent under subsequent
`
`reexamination. Id. The Board rejected the argument that the patentee should have
`
`been permitted to amend the patent during reexamination to add the omitted
`
`material from the parent application. Id. However, in reaching this conclusion in
`
`the decision below, the Board stated:
`
`Patent Owner could have amended the 1994 application while
`it was pending to incorporate subject matter from the 1990
`application. However, by allowing the 1994 application to issue . . .
`without the [supporting] subject matter, Patent Owner created a break
`in the chain of disclosures, which cannot be cured by amendment.
`
`
`
`
`6
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`Ex parte Reiffin, App. No. 2007-2127, 2007 WL 2814119, at *65 (BPAI Sept. 25,
`
`2007) (emphasis added). Thus, while the Board rejected the patentee’s attempt
`
`during reexamination to incorporate subject matter from a parent application, i.e.,
`
`after the application had issued, the Board made clear that such an incorporation by
`
`reference of subject matter from a parent application would have been proper if
`
`done while the application was still pending. Reiffin, 340 Fed. Appx. at *658.
`
`The Federal Circuit found the Board’s reasoning to be “sound.” Id. at
`
`*659. Indeed, the Federal Circuit confirmed the propriety of amending a pending
`
`CIP application to incorporate subject matter from a parent application:
`
`In a continuation-in-part application, an applicant is free to add matter
`from earlier related applications in a chain of co-pending applications
`in order to reap the benefit of the full scope of the inventions
`disclosed in the applicant’s earlier disclosure.
`
`Id. The Federal Circuit also made clear that the new matter prohibition under 35
`
`U.S.C. § 132 does not apply to this circumstance:
`
`It is true that the statutory prohibition against introducing “new
`matter” [under Section 132] does not apply
`in
`the
`limited
`circumstance in which the application incorporates material from an
`earlier application in a chain of co-pending applications.
`
`
`Id.
`
`The Federal Circuit agreed with the Board that this circumstance did not
`
`apply in Reiffin because the chain of co-pending applications had been broken by
`
`
`
`7
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`the issuance of the patent under reexamination. Id. Thus, the Federal Circuit
`
`affirmed the Board’s rejection of the claims. Id. at 660.
`
`2.
`Litton v. Whirlpool
`In Litton v. Whirlpool, 728 F.2d 1423 (Fed. Cir. 1984), the Federal Circuit
`
`addressed the priority date of Litton’s patent, which issued from a CIP application.
`
`Litton filed an original patent application and, after two office actions and a final
`
`rejection, Litton decided to file a continuation application. Id. at 1435. Along with
`
`the continuation application, Litton filed a preliminary amendment with claims
`
`reciting a microwave door having a thin sheet of metal that was “self-supporting”
`
`and “shatterproof.” Id. The original parent application did not expressly limit the
`
`metal sheet as being “self-supporting” or “shatterproof.” Id. The PTO rejected the
`
`claims on the basis that the terms “self-supporting” and “shatterproof” constituted
`
`new matter. Id.
`
`Litton then filed a proposed amendment to the specification to indicate that
`
`the metal sheet is “self-supporting” and “shatterproof.” Id. Litton argued in
`
`accompanying remarks that the terms “self-supporting” and “shatterproof” were
`
`not new matter because they were inherent qualities of the metal sheet as disclosed
`
`in the original patent application. Id. However, the PTO again rejected the claims
`
`as being drawn to new matter.
`
`
`
`8
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`After an oral interview with the PTO, Litton filed another amendment
`
`leaving the words “self-supporting” and “shatterproof” in both the specification
`
`and the claims. Id. at 1436. Also in that amendment, Litton requested that the
`
`PTO re-characterize the continuation application as a CIP application. Id. The
`
`PTO then allowed the patent.
`
`The district court agreed with Litton that the PTO had abandoned its position
`
`that the terms “self-supporting” and “shatterproof” were new matter. On appeal,
`
`Litton again argued that “self-supporting” and “shatterproof” were inherent to the
`
`parent application and thus could not be new matter. The Federal Circuit rejected
`
`Litton’s inherency argument because file history evidence showed that Litton knew
`
`it was including new matter when it responded to a new matter rejection by
`
`converting its continuation application to a CIP application. Id. at 1439.
`
`In assessing Litton’s arguments, the Federal Circuit explained that CIP
`
`applications often generate two effective filing dates, where new matter in a CIP
`
`application has the filing date of the CIP application, and matter shared with a
`
`parent application has the earlier filing date of the parent application. Id. at 1438.
`
`The Federal Circuit stated that “[i]f matter added through amendment to a C-I-P
`
`application is deemed inherent in whatever the original parent application
`
`discloses, however, that matter also is entitled to the filing date of the original,
`
`parent application.” Id.
`
`
`
`9
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`Accordingly, the Federal Circuit confirmed that matter from a parent
`
`application – even if only inherent in the parent application – may be added to a
`
`CIP application by amendment and will have the filing date of the parent
`
`application. This principle applies with even more force to the present situation,
`
`because Patent Owner incorporated the subject matter by reference, and thus the
`
`added matter was directly disclosed, and not merely inherent, in the parent
`
`application.
`
`3. Harari v. Hollmer
`Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010), addressed the new
`
`matter analysis in the context of a continuation application. In Harari, the parties
`
`disputed whether a statement incorporating subject matter into a continuation
`
`application was sufficiently definite to identify a particular parent application. Id.
`
`at 1350. The Board below agreed with the examiner that the incorporating
`
`language was unclear about which parent application was identified and affirmed
`
`the examiner’s rejection of the incorporation as new matter. Id.
`
`On appeal, the Federal Circuit disagreed and found the incorporation
`
`language sufficiently definite. Id. at 1354. As part of its analysis, the Federal
`
`Circuit looked to the MPEP and explained what is the proper inquiry to determine
`
`whether matter added by amendment to a continuation application is new matter:
`
`If an amendment was not part of the original disclosure, the examiner
`then determined whether that amendment included new matter. [] In
`
`
`
`10
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`the context of a continuation application, the examiner’s inquiry was
`whether the amendment added to the continuation application
`“anything which would constitute new matter if inserted in the
`original application.”
`
`Id. at 1351 (citing MPEP § 201.07 (7th ed.); 37 C.F.R. § 1.53(b)) (internal citations
`
`omitted). The Federal Circuit agreed with Harari that its incorporation by
`
`reference was sufficiently definite in referring to a specific parent application and
`
`thus did not constitute new matter. Harari, 602 F.3d at 1352.
`
`The analysis in Harari is consistent with Litton’s approach of assessing new
`
`matter in CIP applications by comparing the matter added to the disclosure of the
`
`parent application. Applying this reasoning to the CIP application at issue in the
`
`present Petition, there can be no question that the incorporating language clearly
`
`references the disclosure of Patent Owner’s 2001 parent application. Since the
`
`subject matter Patent Owner incorporated is precisely the subject matter of the
`
`parent application, it is not new matter.
`
`B.
`
`Patent Owner’s Incorporation of its Earlier Application Maintained
`Continuity of Disclosure Back to the 2001 Application
`
`The crux of the Petition is Petitioner’s argument that “December 21, 2001
`
`cannot be the priority date of the ‘396 patent.” Pet. 17. However, as the Board and
`
`Federal Circuit decisions above demonstrate, an applicant can amend a CIP
`
`application during prosecution to add subject matter from a parent application –
`
`just as Patent Owner did here – and such subject matter is not new matter. By
`
`
`
`11
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`amending the 2003 application before issuance to incorporate the 2001 application
`
`in its entirety (Ex. 1005 – 0375), Patent Owner properly kept the chain of
`
`supporting disclosure back to the filing date of Patent Owner’s original 2001
`
`application.
`
`Petitioner’s cited authority does not alter this straightforward conclusion.
`
`Petitioner relies on MPEP § 201.06(c)(IV)1 to argue that Patent Owner’s
`
`incorporation by reference constituted “improper new matter” and was thus
`
`“ineffective in establishing continuity of disclosure back to the 2001 application.”
`
`Pet. 11, 17. However, the sentence in Section 201.06(c)(IV) relied upon by
`
`Petitioner does not support Petitioner’s argument here. That sentence in its entirety
`
`reads as follows:
`
`An incorporation by reference statement added after an
`application’s filing date is not effective because no new matter can be
`added to an application after its filing date (see 35 U.S.C. 132(a)).
`
`(MPEP § 201.06(c)(IV) (emphasis added).
`
`Although Petitioner cropped out the bolded citation to 35 U.S.C. § 132,
`
`(Pet. 17), that citation makes clear that this sentence merely reflects the general
`
`prohibition against new matter as set forth in Section 132(a). But as the Federal
`
`Circuit has made clear, the new matter prohibition of Section 132 does not apply in
`
`1 MPEP § 201.06 governs divisional applications. Although a divisional
`application is a “continuing” application like a CIP, the MPEP treats divisional
`applications separately from CIP applications. See MPEP §§ 201.02, 201.08.
`
`
`
`12
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`the circumstance that exists here – namely, where Patent Owner incorporates
`
`material from an earlier application in a chain of co-pending applications. See
`
`Reiffin, 340 Fed. Appx. at *659.
`
`Moreover, the Federal Circuit has confirmed that, in a CIP application, “an
`
`applicant is free to add matter from earlier related applications in a chain of co-
`
`pending applications in order to reap the benefit of the full scope of the inventions
`
`disclosed in the applicant’s earlier disclosure.” See id. Indeed, this conclusion
`
`necessarily follows because subject matter is not treated as new matter in a CIP if it
`
`would not be considered new matter to the parent application. See Litton, 728 F.2d
`
`at 1438; see also Harari, 602 F.3d at 1351-52 (addressing continuation
`
`applications).
`
`For this reason, Petitioner is incorrect that written description support for the
`
`claims of the ‘396 patent must exist in the disclosure of the 2003 application “as
`
`originally filed,” and the references Petitioner cites in support of this argument are
`
`inapposite. See Pet. 9-11, 15-17 (citing references). None of Petitioner’s
`
`references purport to address the particular circumstance here concerning the
`
`propriety of amending a CIP application prior to issuance to expressly incorporate
`
`by reference the entire disclosure of a parent application. See Reiffin, 340 Fed.
`
`Appx. at *659. Moreover, Petitioner’s cited references essentially reflect the
`
`general prohibition against adding new matter after an application is filed.
`
`
`
`13
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`However, Patent Owner’s timely amendment to incorporate the 2001 parent
`
`application into the 2003 CIP application violated no new matter restriction as the
`
`above Board and Federal Circuit decisions establish.
`
`Finally, this is not a situation like that in Dart Indus., Inc. v. Banner, 636
`
`F2d 684, 688 (D.C. Cir. 1980), where the chain of continuity was broken because
`
`the CIP was allowed to issue before the patentee attempted to incorporate subject
`
`matter from a parent application. See Reiffin, 340 Fed. Appx. at *660 (discussing
`
`Dart); see also Ex parte Reiffin, 2007 WL 2814119, at *66 (“Once the patent
`
`issues, the record is fixed and new matter may not be added.”). Nor is this a
`
`situation where Patent Owner sought to incorporate subject matter while also
`
`seeking to add a priority benefit claim under 35 U.S.C. § 120 after the CIP
`
`application was filed. See MPEP § 201.06(c)(IV). There is no dispute that Patent
`
`Owner claimed the priority benefit of 35 U.S.C. § 120 when the 2003 application
`
`was filed. Ex. 1005 – 0003, 0025; Pet. 14 n.4. Because Patent Owner incorporated
`
`by reference the entirety of the 2001 application prior to the issuance of the 2003
`
`application, Patent Owner’s incorporation by reference was proper and effective to
`
`maintain continuity of disclosure.
`
`C. The Petition Fails
`Petitioner never argues that the 2001 application does not support the ’396
`
`patent claims. Moreover, because continuity of disclosure was never broken as
`
`
`
`14
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`Petitioner argues, the claims of the ’396 patent are entitled to priority back to the
`
`2001 application. Therefore, the ’196 publication (published in 2003) cannot be
`
`prior art to the ’396 patent claims,2 and thus Petitioner’s sole ground of
`
`unpatentability fails.
`
`V. CONCLUSION
`Petitioner has failed to demonstrate a reasonable likelihood of proving any
`
`claim unpatentable. The Board should therefore deny the Petition.
`
`
`
`Dated: November 25, 2016
`
`Respectfully submitted,
`
`LYMAN PATENT SERVICES
`
`/ Megan Lyman /
`Megan Lyman (Reg. No. 57,054)
`Attorney for Patent Owner
`ONE-E-WAY, INC.
`Customer No. 68533
`(919) 341-4023
`
`
`
`
`2 Because the ’196 publication cannot be prior art, Patent Owner does not
`address Petitioner’s claim charts or arguments comparing that publication to the
`’396 patent claims.
`
`
`
`15
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`CERTIFICATE OF COMPLIANCE
`
`This document complies with the type-volume limitation of 37 C.F.R.
`
`§ 42.24(a)(1)(i) and § 42.24(b)(1). This Preliminary Response contains 3,010
`
`words, excluding the parts of the document exempted by 37 C.F.R. § 42.24(a)(1).
`
`
`
`Dated: November 25, 2016
`
`
`
`
`
`/ Megan Lyman /
`Megan Lyman (Reg. No. 57,054)
`
`Attorney for Patent Owner
`ONE-E-WAY, INC.
`
`
`
`
`
`
`
`1
`
`
`
`Case IPR2016-01638
`Patent 9,282,396
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e), a true and correct copy
`
`of Patent Owner One-E-Way, Inc.’s Preliminary Response To Petition For Inter
`
`Partes Review is being served on November 25, 2016 via FedEx Priority Overnight
`
`on counsel for Petitioner Sony Corporation at the addresses below:
`
`John Flock
`Kenyon & Kenyon LLP
`One Broadway,
`New York, NY 10004
`Telephone: (212) 425-7200
`
`Paul T. Qualey
`Kenyon & Kenyon LLP
`1500 K Street N.W. Ste. 700
`Washington, DC 20005
`Telephone: (202) 220-4200
`
`/ Megan Lyman /
`Megan Lyman (Reg. No. 57,054)
`
`Attorney for Patent Owner
`ONE-E-WAY, INC.
`
`
`
`2
`
`
`Dated: November 25, 2016
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
