Filed: June 2, 2017
`
`Filed on behalf of:
`One-E-Way
`By: Douglas G. Muehlhauser (Reg. No. 179,495)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: 2dgm@knobbe.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 IPR2016-01639
`Patent 9,282,396
`
`
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`Filed on behalf of:
`One-E-Way
`By: Douglas G. Muehlhauser (Reg. No. 179,495)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: 2dgm@knobbe.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 IPR2016-01639
`Patent 9,282,396
`
`
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`Case IPR2016-01639
`Patent 9,282,396
`
`TABLE OF CONTENTS
`
`
`Page No.
`
`INTRODUCTION ........................................................................................... 1
`
`
`I.
`
`II. BACKGROUND ............................................................................................. 3
`
`III. OVERVIEW OF THE ’396 PATENT ............................................................ 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`The Specification ................................................................................... 4
`
`The claims ............................................................................................. 5
`
`Preliminary Claim Construction............................................................ 6
`
`Person of Ordinary Skill in the Art ....................................................... 7
`
`Effective Filing Date of the Challenged Claims ................................... 7
`
`IV. PETITIONER’S THEORIES .......................................................................... 7
`
`V. OVERVIEW OF THE REFERENCES RELIED UPON ................................ 8
`
`A.
`
`B.
`
`C.
`
`The ’892 Patent ..................................................................................... 8
`
`The 1998 Paper ...................................................................................... 9
`
`Giannakis ............................................................................................... 9
`
`VI. THE PETITION IS FUNDAMENTALLY DEFICIENT ............................... 9
`
`VII. GROUND 1 FAILS ....................................................................................... 10
`
`A.
`
`The ’892 Patent Fails to Properly Incorporate Any
`Subject Matter from the 1998 paper .................................................... 10
`
`1.
`
`The Legal Standard for Incorporation by
`Reference Requires Specific Identification of
`Material ..................................................................................... 10
`
`i
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`Case IPR2016-01639
`Patent 9,282,396
`
`TABLE OF CONTENTS
`(cont’d.)
`
`Page No.
`
`
`2.
`
`The ’892 Patent Fails to Incorporate the 1998
`Paper .......................................................................................... 11
`
`B.
`
`Petitioner Improperly Bases Its Anticipation Theory
`on Two Separate Embodiments and on Isolated
`References to Other Elements that are Never
`Disclosed as Part of Any Embodiment ............................................... 15
`
`1.
`
`2.
`
`3.
`
`The Legal Standard for Anticipation ........................................ 15
`
`The ’892 Patent and the 1998 Paper Disclose
`Separate and Distinct Embodiments ......................................... 16
`
`The Isolated Mentions of DPSK and a
`Homodyne Receiver are Never Disclosed as
`Part of Any Embodiment .......................................................... 17
`
`Petitioner fails to show that the ’892 patent discloses a
`headphone comprising a direct conversion module.
`Limitations 1(d) and (e). ...................................................................... 18
`
`Petitioner fails to show that the ’892 patent discloses a
`direct conversion module configured to capture
`packets corresponding to a unique user code.
`Limitation 1(e). .................................................................................... 20
`
`Petitioner has failed to demonstrate that the ’892
`patent discloses any transmitter or any headphone
`comprising any differential phase shift keying
`(DPSK) functionality ........................................................................... 22
`
`Petitioner fails to show that the ’892 patent discloses a
`transmitter comprising an encoder for reduced ISI
`coding. Limitations 1(b) and (c). ........................................................ 26
`
`C.
`
`D.
`
`E.
`
`F.
`
`ii
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`Patent 9,282,396
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`TABLE OF CONTENTS
`(cont’d.)
`
`Page No.
`
`
`G.
`
`H.
`
`I.
`
`J.
`
`Petitioner fails to show that the ’892 patent discloses
`independent CDMA operation. Limitations 1(d) and
`(f). ........................................................................................................ 28
`
`Petitioner fails to show that the ’892 patent discloses a
`digital demodulator. Limitation 1(f). .................................................. 29
`
`Petitioner fails to show that the ’892 patent discloses a
`decoder operative to decode the applied reduced
`intersymbol interference coding. Limitation 1(g). ............................. 31
`
`Petitioner fails to show that the ’892 patent discloses a
`system in which other signals are inaudible while
`operating in the spread spectrum. Limitation 1(j). ............................. 34
`
`VIII. GROUND 2 ALSO FAILS ............................................................................ 37
`
`A.
`
`B.
`
`C.
`
`For All Limitations other than the Reduced ISI
`Limitations, Petitioner Offers No Additional
`Argument in Support of its Ground 2 Obviousness
`Theory and Thus, Ground 2 Fails for the Same
`Reasons as Ground 1 ........................................................................... 37
`
`1.
`
`Petitioner fails to apply critical aspects of the
`required Graham analysis ......................................................... 37
`
`Petitioner Fails to Provide Any Argument or Analysis
`Addressing a Reason or Motivation to Combine
`Giannakis with the ’892 Patent, and this Failure is
`Fatal to Ground 2 ................................................................................. 40
`
`Petitioner Misleadingly Omitted and Ignored
`Giannakis’ Express Statement Limiting the
`Applicability of its Approach and Thus Failed to
`Sustain its Burden to Demonstrate any Reason or
`Motivation to Combine Giannakis with the ’892
`Patent ................................................................................................... 43
`
`iii
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`Case IPR2016-01639
`Patent 9,282,396
`
`TABLE OF CONTENTS
`(cont’d.)
`
`Page No.
`
`
`1.
`
`2.
`
`3.
`
`Petitioner’s Declarant, Mr. Moring, Used an
`Ellipsis to Omit and Ignore Giannakis’ Express
`Restriction On Applicability ..................................................... 44
`
`A Person of Ordinary Skill in the Art Would
`Understand that Bluetooth is a Fast Hopping
`System, and Zhou Expressly States that Fast
`Hopping Systems are Beyond the Scope of the
`Disclosed ɸm-based Frequency Hopping
`Technique .................................................................................. 47
`
`A Person of Ordinary Skill in the Art Would
`Know that Giannakis’ ɸm-Based Frequency
`Hopping Approach is Not Possible in Bluetooth ...................... 48
`
`a.
`
`b.
`
`c.
`
`A Person of Ordinary Skill in the Art
`Would Understand that Frequency-
`Hopping Cannot be Implemented in
`Bluetooth using Zhou’s Subcarrier
`Selector Matrix ɸm .......................................................... 49
`
`A Person of Ordinary Skill in the Art
`Would Understand that Redundant
`Simultaneous Transmissions on Multiple
`Frequencies is Incompatible with
`Bluetooth ......................................................................... 50
`
`Petitioner has Failed to Demonstrate that
`a Person of Ordinary Skill in the Art
`Would Have Had Any Reason or
`Motivation to Combine Giannakis and
`the ’892 Patent ................................................................ 51
`
`IX. CONCLUSION .............................................................................................. 52
`
`
`
`iv
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`TABLE OF AUTHORITIES
`
`
`
`Advanced Display Sys., Inc. v. Kent State Univ.,
`212 F.3d 1272 (Fed. Cir. 2000) .................................................................... 10, 11
`
`Page No.
`
`Apple, Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00358, Paper 9 (July 2, 2015) ............................................................. 42
`
`Connell v. Sears, Roebuck & Co.,
`722 F.2d 1542 (Fed.Cir.1983) ............................................................................ 15
`
`Cook Biotech Inc. v. Acell, Inc.,
`460 F.3d 1365 (Fed. Cir. 2006) .............................................................. 12, 13, 14
`
`Google, Inc. v. EVERYMD.COM LLC,
`IPR2014-00347, Paper 9 (May 22, 2014) ............................................................. 9
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................... 37, 38, 39
`
`Karsten Mfg. Corp. v. Cleveland Golf Co.,
`242 F.3d 1376 (Fed. Cir. 2001) .......................................................................... 52
`
`Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
`730 F.2d 1452 (Fed.Cir.1984) ............................................................................ 15
`
`Motorola Mobility, LLC v. Int’l Trade Comm’n,
`737 F.3d 1345 (Fed. Cir. 2013) .......................................................................... 38
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed.Cir.2008) .....................................................................passim
`
`Synqor, Inc. v. Artesyn Techs., Inc.,
`709 F.3d 1365 (Fed. Cir. 2013) .......................................................................... 15
`
`Therasense, Inc. v. Becton, Dickinson and Co.,
`593 F.3d 1325 (Fed. Cir. 2010) .................................................................... 14, 15
`
`Valeo N. Am., Inc. v. Magna Elec., Inc.,
`IPR2014-01206, Paper 13 (Dec. 23, 2014)........................................................... 9
`
`v
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`TABLE OF AUTHORITIES
`(cont’d.)
`
`Zenon Environmental, Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) .............................................................. 12, 13, 14
`
`Page No.
`
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 102 ........................................................................................................ 15
`
`35 U.S.C. § 312 .......................................................................................................... 9
`
`37 C.F.R. § 42.22 ....................................................................................................... 9
`
`37 C.F.R. § 42.104 ..................................................................................................... 9
`
`
`
`vi
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`Exhibit No. Description
`
`EXHIBIT LIST
`
`Declaration of Joseph C. McAlexander III
`
`S. Zhou, G. Giannakis, and A. Swami, “Frequency-Hopped
`Generalized MC-CDMA for Multipath and Interference
`Suppression,” MILCOM 2000 Proceedings
`
`A. Fredman, “Mechanisms of Interference Reduction for
`Bluetooth,” Burlington, VT, USA (2002)
`
`Y. Lee, R. Kapoor, and M. Gerla, “An Efficient and Fair Polling
`Scheme for Bluetooth,” MILCOM 2002, volume 2, pages 1062-
`1068, 2002.
`
`Deposition Notice of John Moring [SERVED ONLY]
`
`Transcript of the May 24, 2017 Deposition of John Moring
`
`Supplemental Declaration of Joseph C. McAlexander III
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`
`
`vii
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`Case IPR2016-01639
`Patent 9,282,396
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`I. INTRODUCTION
`Pursuant to § 42.120, Patent Owner One-E-Way, Inc. hereby submits this
`
`Patent Owner Response to the Petition for Inter Partes Review of U.S. Patent No.
`
`9,282,396 (the “Petition” or “Pet.”). The Board should confirm the patentability of
`
`Claims 1-17 of U.S. Patent No. 9,282,396 (“the ’396 patent”).
`
`The Petition presents two grounds, each directed at all 17 claims of the ’396
`
`patent. In Ground 1, Petitioner argues anticipation of all claims based on U.S.
`
`Patent No. 6,678,892 (“the ’892 patent”). In Ground 2, Petitioner argues
`
`obviousness based on combining the ’892 patent with the “Giannakis” paper. Both
`
`grounds fail for numerous reasons.
`
`Petitioner improperly argues anticipation for Ground 1 by relying on
`
`separate disclosures pertaining to two distinct embodiments. The first embodiment
`
`is a small interference suppression circuit disclosed in the ’892 patent. Petitioner’s
`
`expert, Mr. Moring, testified that the suppression circuit is useful in almost all
`
`radio systems. The second embodiment is a 1998 paper disclosing characteristics
`
`of an early Bluetooth standard. Mr. Moring further testified that the invention of
`
`the ’892 patent is not a Bluetooth embodiment and that the ’892 patent does not
`
`disclose any Bluetooth embodiments. Petitioner improperly blends disclosures
`
`from these two embodiments as if they were one and the same.
`
`
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`1
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`Patent 9,282,396
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`The impropriety in Petitioner’s anticipation argument extends further. In
`
`background information, the ’892 patent makes isolated mention of DPSK and of a
`
`homodyne receive. Even though these two items are never disclosed as part of the
`
`invention or as part of any embodiment, Petitioner’s anticipation theory relies
`
`heavily on them to satisfy specific arrangements required by the challenged patent
`
`claims for which no disclosure from actual prior art embodiments exists. The law
`
`on anticipation bars Petitioner’s patchwork approach.
`
`As for Ground 2, Petitioner bases its obviousness theory on combining the
`
`Giannakis paper with its anticipation reference, the ’892 patent. Petitioner relies
`
`on Giannakis only as disclosing a technique for reducing intersymbol interference.
`
`But when addressing a reason and/or motivation to combine Giannakis with the
`
`’892 patent, Petitioner improperly treats the ’892 patent as a Bluetooth
`
`embodiment and argues that Giannakis can properly be combined with Bluetooth.
`
`Again, Petitioner’s expert clearly testified that the invention of the ’892 patent is
`
`not a Bluetooth embodiment, and that the ’892 patent does not disclose any
`
`Bluetooth embodiments. Rather, the invention of the ’892 patent is a small
`
`interference suppression circuit disclosed as addressing intersymbol interference in
`
`radio communications. Petitioner offered no evidence into the record why a person
`
`of ordinary skill in the art would combine the intersymbol interference reduction
`
`
`
`2
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`technique of Giannakis with the suppression circuit of the ’892 patent that already
`
`addresses such interference.
`
`Still further, Petitioner ignored the express warning from Giannakis that
`
`combination with Petitioner’s anticipation reference was beyond the scope of the
`
`disclosed teaching. Petitioner’s expert, Mr. Moring, used an ellipsis when quoting
`
`from Giannakis to omit that warning from his analysis.
`
`For these and other reasons explained below, the present record fails to
`
`demonstrate that any of the challenged patent is invalid.
`
`Earl Woolfork
`
`is
`
`II. BACKGROUND
`the named
`inventor on
`
`the challenged patent.
`
`Mr. Woolfork assigned his patent to his company, Patent Owner One-E-Way, Inc.,
`
`where he is the Founder and CEO. Today, One-E-Way manufactures and sells its
`
`own line of wireless audio headsets embodying Mr. Woolfork’s invention.
`
`Mr. Woolfork first conceived of his wireless audio headset inventions in the
`
`late 1990’s while exercising outdoors at the popular Santa Monica Steps in Los
`
`Angeles. Mr. Woolfork noticed that many people were having trouble with the
`
`wires connecting their audio players to their headsets, which interrupted their
`
`exercise routines. Mr. Woolfork set out to create a solution that allowed people to
`
`exercise free of wires, while still enjoying high quality music. Mr. Woolfork
`
`conceived of a mobile audio transmitter and separate receiver that could
`
`
`
`3
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`Patent 9,282,396
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`communicate using radio signals and packet formats to communicate high quality
`
`audio data.
`
`III. OVERVIEW OF THE ’396 PATENT
`A. The Specification
`The ’396 patent’s Summary of the Invention section explains that that the
`
`patent “is generally directed to a wireless digital audio system for coded digital
`
`transmission of an audio signal from any audio player with an analog headphone
`
`jack to a receiver headphone located away from the audio player.” Ex. 1001 at
`
`1:62-66. The patent’s focus on a total wireless audio system, including an audio
`
`player, a transmitter, and a headphone is represented in Figure 1, described as “a
`
`wireless digital audio system in accordance with the present invention:”
`
`Id. at Fig. 3 and 2:19-20.
`
`
`
`4
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`
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`The ’396 patent discloses techniques to improve listening quality while
`
`reducing interference in order to provide private listening. The patent explains
`
`that, even when multiple such systems operate in a shared space, “[e]ach receiver
`
`headphone user may be able to listen (privately) to high fidelity audio music, using
`
`any of the audio devices listed previously, without the use of wires, and without
`
`interference from any other receiver headphone user, even when operated within a
`
`shared space.” Id. at 3:40-44.
`
`B.
`
`The claims
`
`The ’396 patent has seventeen claims directed to specific embodiments of
`
`wireless digital audio systems or components within such a system. Of the
`
`seventeen claims, claims 1, 2, 6, 9, 14, and 16 are independent. For ease of
`
`reference and illustration, claim 1 is reproduced below:1
`
`1. A portable wireless digital audio system for digital transmission
`of an original audio signal representation from a portable audio source
`to a digital audio headphone, said audio signal representation
`representative of audio from said portable audio source, said portable
`wireless digital audio system comprising:
`a portable digital audio spread spectrum transmitter configured to
`couple to said portable audio source and transmitting a unique
`user code bit sequence with said original audio signal
`representation in packet format, said digital audio spread
`spectrum transmitter comprising:
`an encoder operative to encode said original audio signal
`representation to reduce intersymbol interference and lowering
`
`1 Patent Owner does not suggest that claim 1 is representative or that the
`patentability of the other claims rises or falls with claim 1.
`
`
`
`5
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`signal detection error of said audio signal representation
`respective to said digital audio headphone and said digital audio
`spread spectrum transmitter; and
`a digital modulator configured for independent code division
`multiple access (CDMA) communication operation wherein
`said portable digital audio spread spectrum transmitter is in
`direct communication with said digital audio headphone, said
`digital audio headphone comprising:
`a direct conversion module configured to capture packets and the
`correct bit sequence embedded in the received spread spectrum
`signal and lowering signal detection error through reduced
`intersymbol interference coding respective of said digital audio
`headphone and said portable digital audio spread spectrum
`transmitter, the captured packets corresponding to the unique
`user code bit sequence;
`a digital demodulator configured
`communication operation;
`a decoder operative to decode the applied reduced intersymbol
`interference coding of said original audio signal representation;
`a digital-to-analog converter (DAC) generating an audio output of
`said original audio signal representation; and
`a module adapted to reproduce said audio output, wherein each
`user has their headphone configured to communicate with their
`own separate digital audio spread spectrum transmitter, said
`audio having been wirelessly transmitted from said portable
`audio source through the digital audio spread spectrum
`transmitter configured to communicate with the headphone
`such that signals not originating from said portable digital audio
`spread spectrum transmitter are inaudible while operating in the
`portable wireless digital audio spread spectrum transmitter
`spectrum.
`
`independent CDMA
`
`for
`
`
`Preliminary Claim Construction
`
`C.
`
`Petitioner requested that four terms be construed according to the
`
`constructions adopted in an ITC investigation concerning patents related to the
`
`
`
`6
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`Patent 9,282,396
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`’396 patent at issue here. Petitioner’s request included that “configured for
`
`independent code division multiple access (CDMA) communication operation” be
`
`construed to mean “configured for code division multiple access (CDMA)
`
`communication operation performed independent of any central control.” Pet. 11-
`
`12. While Patent Owner does not dispute the proposed claim constructions, the
`
`Board stated in its decision instituting this Review that it does not believe any
`
`construction is required to resolve the dispute. Institution Decision 6.
`
`D.
`
`Person of Ordinary Skill in the Art
`
`Patent Owner does not contest the level of skill proposed by Petitioner for a
`
`person of ordinary skill in the art. See Pet. 11.
`
`E.
`
`Effective Filing Date of the Challenged Claims
`
`Though it appears to have no bearing on this Petition, Petitioner disputes the
`
`priority date of the ’396 patent. Pet. 12-19. But Petitioner overlooks settled law,
`
`and its position on the priority date is incorrect. Petitioner raised the very same
`
`priority dispute in co-pending IPR2016-01638. Because the priority dispute has no
`
`bearing on the grounds raised here, Patent Owner does not repeat its arguments
`
`fully addressing that dispute in IPR2016-01638.
`
`IV. PETITIONER’S THEORIES
`Petitioner presents two grounds for inter partes review based on a total of
`
`three references:
`
`
`
`7
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`Exhibit Reference
`
`1006
`
`U.S. Patent No. 6,563,892
`
`Shorthand Name
`
`‘892 patent
`
`1007
`
`1009
`
`J. Haartsen, “Bluetooth—The universal radio
`interface for ad hoc, wireless connectivity,” Ericsson
`Review, Oct. 1998
`
`1998 paper
`
`G.B. Giannakis, A.Stamoulis, Z.Wang, and
`P.A.Anghel, “Load-Adaptive MUI/ISI-Resilient
`Generalized Multi-Carrier CDMA with Linear and
`DF Receivers,” European Transactions on
`Telecommunications J., Vol. 11, No. 6, Nov.-Dec.
`2000
`
`Giannakis
`
`The two grounds are:
`
`Ground References
`
`‘892 patent
`
`‘892 patent and Giannakis
`
`1
`
`2
`
`
`Basis
`
`Claims
`Challenged
`
`§ 102(b) or
`§ 102(e)
`
`§ 103
`
`1-17
`
`1-17
`
`V. OVERVIEW OF THE REFERENCES RELIED UPON
`A. The ’892 Patent
`The ’892 patent is titled, “Method and system for detection of binary
`
`information in the presence of slowly varying disturbances.” Ex. 1006 at 1. The
`
`’892 patent notes “drawbacks,
`
`limitations and problems associated with
`
`conventional techniques for compensating for slowly varying disturbances.” Id. at
`
`3:6-8. To address these, the ’892 patent discloses a small suppression circuit based
`
`
`
`8
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`on a narrow technique of including a filter in a receiver to suppress disturbances,
`
`and then using a Viterbi algorithm to correct for interference introduced by the
`
`filter. Id. at 3:11-28, Figs. 6, 7.
`
`B.
`
`The 1998 Paper
`
`The 1998 paper is titled, “Bluetooth—the universal radio interface for ad
`
`hoc, wireless connectivity.” Ex. 1007 at 1. The 1998 paper introduces and
`
`describes aspects of the Bluetooth communication protocol.
`
`C. Giannakis
`Giannakis is a paper titled, “Load-Adaptive MUI/ISI-Resilient Generalized
`
`Multi-Carrier CDMA with Linear and DF Receivers.” Ex. 1009 at 0004.
`
`Giannakis proposes eliminating multi-user interference based on a frequency
`
`hopping technique that uses a ɸm selector matrix to provide mutually orthogonal
`
`frequency hopping patterns for each of m users. Giannakis explains that the
`
`disclosed techniques could apply in other systems, but only if frequency hopping is
`
`introduced via the disclosed ɸm technique. Id. at 0008.
`
`VI. THE PETITION IS FUNDAMENTALLY DEFICIENT
`A petition for inter partes review must provide a detailed explanation of the
`
`evidence and identify with specificity where each claim limitation is found in the
`
`asserted prior art. 35 U.S.C. § 312(a)(3); see also 37 C.F.R. §§ 42.22,
`
`42.104(b)(4),(5). It is not enough to quote from alleged prior art without providing
`
`linking analysis that specifies how each limitation is allegedly satisfied by the
`9
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`quoted material. E.g., Google, Inc. v. EVERYMD.COM LLC, IPR2014-00347,
`
`Paper 9, at 19–20, 24–25 (May 22, 2014); see also Valeo N. Am., Inc. v. Magna
`
`Elec., Inc., IPR2014-01206, Paper 13, at 13–14 (Dec. 23, 2014).
`
`Petitioner fails to meet its burden to identify prior art disclosure of each and
`
`every limitation as arranged in the challenged patent claims. Petitioner also fails to
`
`introduce evidence into the record showing any reason or motivation to combine
`
`the Giannakis reference with the ’892 patent. For these and other reasons, Grounds
`
`1 and 2 both fail.
`
`VII. GROUND 1 FAILS
`A. The ’892 Patent Fails to Properly Incorporate Any Subject Matter from
`the 1998 paper
`
`Ground 1 is based on Petitioner’s argument that the ’892 patent incorporates
`
`matter from a 1998 paper. Pet. 9. To be clear, even if the alleged incorporation
`
`were proper, the combined disclosures of the ’892 patent and the 1998 paper still
`
`fail to disclose each and every limitation of any of the challenged claims. But the
`
`failure of the alleged incorporation is singularly fatal to Petitioner’s Ground 1
`
`anticipation theory, because Petitioner relies solely upon the 1998 paper as
`
`providing alleged disclosure of many claim limitations.
`
`1.
`
`The Legal Standard for Incorporation by Reference Requires
`Specific Identification of Material
`
`Whether and to what extent material is incorporated by reference into a host
`
`document is a question of law. Advanced Display Sys., Inc. v. Kent State Univ.,
`10
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`Case IPR2016-01639
`Patent 9,282,396
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`212 F.3d 1272, 1282 (Fed. Cir. 2000). “To incorporate material by reference, the
`
`host document must identify with detailed particularity what specific material it
`
`incorporates and clearly indicate where that material is found in the various
`
`documents.” Id. (collecting cases) (emphasis added).
`
`The ’892 Patent Fails to Incorporate the 1998 Paper
`
`2.
`Petitioner states, with little analysis, that “the disclosure of the 1998 paper is
`
`included in the ’892 patent.” Pet. 9. But the incorporating language does not
`
`expressly incorporate the 1998 paper in its “entirety,” nor does it specifically
`
`identify particular subject matter to be incorporated.
`
`Rather, the incorporating language arises in a paragraph that begins by
`
`explaining how, in cellular systems, “channel effects are a dominant disturbance,”
`
`but in other types of systems “the dominant disturbance to transmitted signals may
`
`arise from other sources.” Ex. 1006 – 0013 2:13-16. The paragraph goes on to
`
`identify Bluetooth technology systems as examples of these other types of systems.
`
`Id. 2:16-19. The paragraph then sets forth the alleged incorporating language:
`
`the Bluetooth
`in various details regarding
`interested
`Readers
`technology are referred to the article entitled ‘BLUETOOTH—The
`universal radio interface for ad hoc, wireless connectivity’ authored
`by
`Jaap Haartsen
`and
`found
`in
`the Ericsson Review,
`Telecommunications Technology Journal No. 3, 1998, the disclosure
`of which is incorporated here by reference.
`
`Ex. 1006 – 0013 2:23-29.
`
`
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`11
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`Case IPR2016-01639
`Patent 9,282,396
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`This reference to the 1998 paper is explicitly made for the benefit of
`
`“[r]eaders interested in various details regarding the Bluetooth technology.” Id.
`
`(emphasis added). But the vague reference to unspecified “various details” lacks
`
`the particularity required for effective incorporation by reference. See Advanced
`
`Display Sys., 212 F.3d at 1282; Zenon, 506 F.3d at 1382 (“[P]atent draftsmanship
`
`is an exacting art, and no less care is required in drafting an incorporation by
`
`reference statement than in any other aspect of a patent application.”). The alleged
`
`incorporating language provides no specificity as to what the “various details”
`
`might be.
`
`The Federal Circuit reviewed very similar incorporating language in Cook
`
`Biotech Inc. v. Acell, Inc., 460 F.3d 1365 (Fed. Cir. 2006). In Cook, the Federal
`
`Circuit reviewed the following incorporating language and found that the patentee
`
`intended to incorporate by reference a particular procedure described in an earlier
`
`patent:
`
`The preparation of UBS from a segment of urinary bladder is similar
`to the procedure for preparing intestinal submucosa detailed in U.S.
`Patent No. 4,902,508 [“the ’508 patent”], the disclosure of which is
`expressly incorporated herein by reference.
`
`Id. at 1375.
`
`
`
`According to the Federal Circuit, this incorporating language “makes clear”
`
`that it was the “procedure for preparing intestinal submucosa” that was intended to
`
`be incorporated. Id. at 1376. The Federal Circuit understood that “the disclosure of
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`Case IPR2016-01639
`Patent 9,282,396
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`which” did not refer broadly to the named U.S. patent, but rather to the topical
`
`material identified earlier in the statement, namely the identified procedure. The
`
`Federal Circuit reaffirmed this approach in its decision in Zenon Environmental,
`
`Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1381 (Fed. Cir. 2007). In Zenon, the
`
`Federal Circuit reviewed the Cook incorporating language, stated that it clearly
`
`sought to incorporate the procedure, and that it “did not purport to incorporate by
`
`reference material that exceeded the plain language of the incorporating
`
`statement.” Id. Thus, the Federal Circuit twice found that the incorporating
`
`statement in Cook did not incorporate the entirety of the referenced ’508 patent.
`
`
`
`Here, the incorporating statement is structurally identical to that in Cook. As
`
`in Cook, it never uses the phrase “in its entirety,” and, again as in Cook, a topical
`
`expression precedes the name of the reference. Whereas in Cook, the topical
`
`expression referred to a “procedure,” here the topical expression refers to “various
`
`details regarding Bluetooth technology.” And here, adhering to the Federal
`
`Circuit’s controlling analysis in Cook and Zenon, the phrase “the disclosure of
`
`which” cannot refer to the named reference, but rather the “various details
`
`regarding Bluetooth technology” that are to be found in the reference. Proceeding
`
`otherwise runs afoul of the Federal Circuit’s warning against exceeding the plain
`
`language of the incorporating statement. Zenon, 506 F.3d at 1381.
`
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`Patent 9,282,396
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`
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`Rather than address the problematic vagueness of “various details regarding
`
`Bluetooth technology,” Petitioner quotes only a snippet from the referencing
`
`language and crops out the word “various”:
`
`The ‘892 patent incorporates by reference the 1998 paper for “details
`regarding the Bluetooth technology.”
`
`Pet. 9 (citing Ex. 1006 at 2:23-29). Petitioner’s omission of the word “various” is
`
`suspect, and cannot avoid the outcome of applying the Federal Circuit’s approach
`
`in Cook and Zenon.
`
`Moreover, the ’892 patent does not make any other reference to the 1998
`
`paper. Petitioner’s expert testified that one of ordinary skill in the art needs
`
`nothing from the 1998 paper in order to implement the invention of the ’892
`
`patent. Ex. 2006 18:9-16. He testified that the invention of the ’892 patent is not
`
`even a Bluetooth embodiment. Id. at 20:10-13. One of ordinary skill in the art
`
`would not understand the ’892 patent to describe any particular material within the
`
`1998 paper to be incorporated by reference into the ’892 patent. See Ex. 2001 ¶¶
`
`11-12.
`
`Accordingly, Petitioner’s Ground 1 fails because the ’892 patent does not
`
`properly incorporate anything from the 1998 paper.
`
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`14
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`Case IPR2016-01639
`Patent 9,282,396
`B.
`
`Petitioner Improperly Bases Its Anticipation Theory on Two Separate
`Embodiments and on Isolated References to Other Elements that are
`Never Disclosed as Part of Any Embodiment
`1.
`A patent claim is anticipated if a single prior art reference discloses within
`
`The Legal Stand
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