UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2016-01841
`Patent 9,189,437
`_______________
`___________________________________
`
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S
`PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107
`___________________________________
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2016-01841
`Patent 9,189,437
`_______________
`___________________________________
`
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S
`PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107
`___________________________________
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
` I. STATEMENT OF MATERIAL FACTS IN DISPUTE ................................. 1
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`STATEMENT OF RELIEF REQUESTED ........................................ 1
`
`OVERVIEW OF THE ‘437 PATENT ................................................ 2
`
`LEVEL OF ORDINARY SKILL IN THE ART ................................. 6
`
`CLAIM CONSTRUCTION ................................................................ 7
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS .................... 9
`
`III. THE PETITION FAILS TO MEET THE REQUIREMENTS FOR
`INSTITUTING AN INTER PARTES REVIEW ................................................... 12
`
`A.
`
`B.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S REDUNDANT GROUNDS.................................. 12
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S CONCLUSORY OBVIOUSNESS
`COMBINATIONS ................................................................................... 16
`
`C.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BECAUSE THE
`PRIMARY REFERENCE IN THE PETITION, MURATA, WAS
`PREVIOUSLY PRESENTED TO THE OFFICE ............................... 20
`IV. CONCLUSION ............................................................................................. 25
`
`
`
`i
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`Currently Filed – Patent Owner
`
`Description
`U.S. Patent No. 5,508,821 to Murata
`Information Disclosure Statement (August 24, 2006) for U.S.
`Application No. 11/467,092 resulting in ‘437 Patent
`U.S. Patent No. 8,966,144 to Tasler
`August 24, 2006 Preliminary Amendment for U.S. Application No.
`11/467,092 resulting in ‘437 Patent
`July 17, 2007 Preliminary Amendment for U.S. Application No.
`11/467,092 resulting in ‘437 Patent
`January 2, 2008 Preliminary Amendment for U.S. Application No.
`11/467,092 resulting in ‘437 Patent
`
`
`
`
`
`Previously Filed – Petitioner
`
`Description
`U.S. Patent 9,189,437 to Tasler
`File History Excerpts for U.S. Patent 9,189,437
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 9,189,437
`Curriculum Vitae of Dr. Erez Zadok
`Intentionally left blank
`Intentionally left blank
`“The SCSI Bus and IDE Interface Protocols, Applications and
`Programming,” Schmidt, Friedhelm, 1995
`U.S. Patent No. 5,506,692 to Murata
`U.S. Patent No. 4,727,512 to Birkner
`U.S. Patent No. 4,792,896 to Maclean
`
`ii
`
`
`
`
`
`
`
`Ex. No.
`2001
`2002
`
`2003
`2004
`
`2005
`
`2006
`
`
`
`
`
`
`Ex. No.
`1001
`1002
`1003
`
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`
`
`
`
`
`
`
`1011
`1012
`
`1013
`1014
`1015
`1016
`1017
`1018
`
`1019
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`
`1031
`
`1032
`1033
`1034
`1035
`
`
`
`International Publication Number WO 92/21224 to Jorgensen
`Small Computer System Interface-2 (SCSI-2), ANSI X3.131-1994,
`American National Standard for Information Systems (ANSI).
`Operating System Concepts, by Silberschatz et al., Fourth Edition.
`Microsoft Computer Dictionary, Third Edition, Microsoft Press, 1997
`Intentionally left blank
`Intentionally left blank
`Intentionally left blank
`The IEEE Standard Dictionary of Electrical and Electronics Terms,
`Sixth Edition, 1996
`Intentionally left blank
`Papst Licensing GmbH & Co., KG v. Apple Inc., Case No. 6-15-cv-
`01095 (E.D. Tex.), Complaint filed November 30, 2015
`“Principles of Data Acquisition and Conversion,” Burr-Brown
`Application Bulletin, 1994
`“Principles of Data Acquisition and Con-version,” Intersil Application
`Note, Oct 1986
`“Sample-and-Hold Amplifiers,” Analog Devices MT-090 Tutorial,
`2009
`Declaration of Scott Bennett
`Intentionally left blank
`U.S. Patent No. 4,698,131 to Araghi et al.
`U.S. Patent No. 5,442,465 to Compton
`U.S. Patent No. 5,706,216 to Reisch
`U.S. Patent No. 4,430,673 to Salomon et al.
`Misc. Action No. 07-493 (RMC), MDL No. 1880, Order Regarding
`Claims Construction
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30, 1994
`(“PNP SCSI”)
`U.S. Patent No. 6,094,219 to Roberts et al.
`U.S. Patent No. 4,970,605 to Fogaroli et al.
`U.S. Patent No. 5,623,556 to Murayama et al.
`U.S. Patent No. 5,196,946 to Balkanski et al.
`
`
`iii
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioner Apple, Inc. (“Petitioner”) did not submit a statement of material
`
`facts in its Petition for inter partes review. Paper 2 (Petition). Accordingly, no
`
`response to a statement of material facts is due pursuant to 37 C.F.R. § 42.23(a),
`
`and no facts are admitted.
`
`II.
`
`INTRODUCTION
`Patent Owner Papst Licensing GMBH & Co., KG (“Patent Owner”)
`
`respectfully submits this Patent Owner Preliminary Response under 35 U.S.C. §
`
`313 and 37 C.F.R. § 42.107(a). It is being timely filed on or before January 19,
`
`2017 pursuant to 37 C.F.R. § 42.107(b).
`
`“The Director may not authorize an inter partes review to be instituted
`
`unless the Director determines that the information presented in the petition filed
`
`under section 311 and any response filed under section 313 shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a). Here, institution
`
`should be denied because Petitioner has failed to establish that there is a reasonable
`
`likelihood that it will prevail on its propositions of unpatentability.
`
`
`
`A.
`
`STATEMENT OF RELIEF REQUESTED
`
`
`
`
`
`1
`
`
`
`
`
`Pursuant to 35 U.S.C. § 314(a), Patent Owner respectfully requests that the
`
`Board deny institution of a trial with respect to all challenged claims of the ‘437
`
`Patent.
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘437 PATENT
`The ’437 patent involves a unique method for achieving high data transfer
`
`rates for data acquisition systems (e.g., still pictures, videos, voice recordings) to a
`
`general-purpose computer, without requiring a user to purchase, install, and/or run
`
`specialized software for each system. Exhibit 1001 (‘437 Patent) at 3:33-37. At the
`
`time of the invention, there were an increasing number and variety of data
`
`acquisition systems with the ability to capture high volumes of information. Id. at
`
`1:42-60. As such, there was an increasing demand to transfer that information to
`
`commercially-available, general purpose computers. Id. at 1:29-41. But at that
`
`time—and today—performing that data transfer operation required either loading
`
`specialized, sophisticated software onto a general purpose computer, which
`
`increases the risk of error and the level of complexity for the operator, or
`
`specifically matching interface devices for a data acquisition system to a host
`
`system that may maximize data transfer rates but lacks the flexibility to operate
`
`with different devices. Id. at 1:24-3:25.
`
`The ‘437 Patent recognizes that the existing options were wasteful and
`
`
`
`
`
`2
`
`
`
`
`
`inefficient and presents a solution that would achieve high data transfer rates,
`
`without specialized software, while being sufficiently flexible
`
`to operate
`
`independent of device or host manufacturers. Id. at 2:20-41 and 3:29-32. The
`
`resulting invention would allow a data acquisition system to identify itself as a type
`
`of common device so as to leverage the inherent capabilities of general-purpose,
`
`commercially-available computers. Id. at 4:16-30. Accordingly, users could avoid
`
`loading specific software; improve data transfer efficiency; save time, processing
`
`power, and memory space; and avoid the waste associated with purchasing
`
`specialized computers or loading specific software for each device. Id. at 3:29-32,
`
`3:33-46, 7:38-8:4, 8:34-41, 9:23-27 and 11:38-55. The ’437 Patent claims
`
`variations of this concept and provides a crucial, yet seemingly simple, method and
`
`apparatus for a high data rate, device-independent information transfer. Id. at 3:29-
`
`32.
`
`The interface device disclosed in the ‘437 Patent can leverage “drivers for
`
`input/output device[s] customary in a host device which reside in the BIOS system
`
`of the host device . . . .” Id. at 10:25-26; see also id. at 4:23-27 (“The interface
`
`device according to the present invention therefore no longer communicates with
`
`the host device or computer by means of a specially designed driver but the means
`
`of a program which is present in the BIOS system . . .”), 5:17-23 (describing the use
`
`
`
`
`
`3
`
`
`
`
`
`of “usual BIOS routines” to issue INQUIRY instructions to the interface), and 7:57-
`
`64 (describing use of BIOS routines). Similarly, the written description describes
`
`also using drivers
`
`included
`
`in
`
`the operating system.
`
`
`
`Id. at 5:11-14
`
`(“Communication between the host system or host device and the interface device is
`
`based on known standard access commands as supported by all known operating
`
`systems (e.g., DOS®, Windows®, Unix®).”). Alternatively, if the required
`
`specific driver or drivers for a multi-purpose interface (such as a SCSI interface) is
`
`already present in a host device, such drivers could be used with the ‘437 Patent’s
`
`interface device instead of, or in addition to, customary drivers which reside in the
`
`BIOS. Id. at 10:23-29. Accordingly, the ‘437 Patent contemplated a universal
`
`interface device that could operate independent of the manufacturer of the
`
`computer. Id. at 11:38-55. Indeed, the preferred embodiment discloses that the
`
`interface device includes three different connectors, a 50 pin SCSI connector 1240,
`
`a 25 pin D-shell connector 1280, and a 25 pin connector 1282, to allow the ‘437
`
`Patent’s interface device to connect to a variety of different standard interfaces that
`
`could be present in a host computer. Id. at 8:42-59 and FIG. 2.
`
`The interface device of the ‘437 Patent is capable of acquiring and processing
`
`analog data. As shown in FIG. 2 reproduced below, the ‘437 Patent discloses that
`
`the interface device 10 has an analog input at connection 16 for receiving analog
`
`
`
`
`
`4
`
`
`
`
`
`data from a data transmit/receive device on a plurality of analog input channels
`
`1505 and simultaneously digitizing the received analog data using, inter alia, a
`
`sample and hold amplifier 1515 and an analog to digital converter 1530 that
`
`converts analog data received from the plurality of channels 1505 into digital data
`
`that may then be processed by the processor 1300. Id. at 8:60-9:8 and 9:41-56.
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`LEVEL OF ORDINARY SKILL IN THE ART
`C.
`“The person of ordinary skill in the art is a hypothetical person who is
`
`
`
`
`
`presumed to have known the relevant art at the time of the invention.” Manual of
`
`Patent Examining Procedure (“MPEP”) 2141.II.C. Factors that may be considered
`
`in determining the level of ordinary skill in the art may include: (1) type of
`
`problems encountered in the art; (2) prior art solutions to those problems; (3)
`
`rapidity with which innovations are made; (4) sophistication of the technology; and
`
`(5) educational level of active workers in the field. In re GPAC, 57 F.3d 1573,
`
`1579 (Fed. Cir. 1995).
`
`Petitioner’s proposed definition of the level of ordinary skill in the art is
`
`partially consistent with Patent Owner’s view. Petitioner asserts that “a person
`
`having ordinary skill in the art (‘POSITA’) at the relevant time, would have had at
`
`least a four-year degree in electrical engineering, computer science, computer
`
`engineering, or related field of study, or equivalent experience, and at least two years’
`
`experience in studying or developing computer interfaces or peripherals and storage
`
`related software.” Paper 2 (Petition) at 8. Petitioner further contends that “[a]
`
`POSITA would also be familiar with operating systems (e.g., MS-DOS, Windows,
`
`Unix), their associated file systems (e.g., FAT, UFS, FFS), device drivers for
`
`computer components and peripherals (e.g., mass storage device drivers), and
`
`
`
`
`
`6
`
`
`
`
`
`communication interfaces (e.g., SCSI, USB, PCMCIA).” Id.
`
`Patent Owner contends that the field of the invention relates to “the transfer of
`
`data and in particular to interface devices for communication between a computer or
`
`host device and a data transmit/receive device from which data is to be acquired or
`
`with which two-way communication is to take place.” Exhibit 1001 (‘437 Patent) at
`
`1:18-22. A POSITA would have at least a bachelor’s degree in a related field such as
`
`computer engineering or electrical engineering and at least three years of experience
`
`in the design, development, and/or testing of hardware and software components
`
`involved with data transfer or in embedded devices and their interfaces with host
`
`systems. Alternatively, a POSITA may have five or more years of experience in
`
`these technologies, without a bachelor’s degree.
`
`
`
`D. CLAIM CONSTRUCTION
`In an inter partes review (“IPR”), the Board construes claim terms in an
`
`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The claim
`
`language should be read in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art. Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 136
`
`S. Ct. 2131, 2146 (June 20, 2016). The broadest reasonable meaning given to claim
`
`language must take into account any definitions presented in the specification. In re
`
`
`
`
`
`7
`
`
`
`
`
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re
`
`Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)). Under this standard, claim terms are
`
`given their ordinary and customary meaning as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citing Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)).
`
`Petitioner proposes that “multi-purpose interface of the host computer” be
`
`construed as “a communication interface designed for use with multiple devices that
`
`can have different functions from each other.” Paper 2 (Petition) at 9. Patent
`
`Owner does not take a position at this time related to this term and reserves its right
`
`to challenge Petitioner’s proposed construction, if appropriate, later in the
`
`proceeding.
`
`Petitioner further proposes that “customary device driver” means “driver for a
`
`device normally present in most commercially available host devices at the time of
`
`the invention.” Id. at 10. Patent Owner does not agree with this definition. In
`
`particular, Patent Owner does not agree with Petitioner’s addition of “at the time of
`
`the invention” to its construction. Patent Owner believes a more appropriate
`
`construction would be “the driver for the data device normally part of commercially
`
`available computer systems.”
`
`
`
`
`
`8
`
`
`
`
`
`A significant feature of the ‘437 Patent’s invention is its ability to attach
`
`devices to a host computer without requiring specific user-installed drivers by
`
`identifying the attached device as a device the host device is already prepared to
`
`operate with (e.g. a device for which the host has installed drivers). Exhibit 1001,
`
`(‘437 Patent) at 3:33-40, 4:23-27 and 10:23-26. The ‘437 Patent does not indicate
`
`that only drivers normally installed in host devices at the time of the invention are
`
`somehow critical to practicing the invention. Rather, the specification describes a
`
`wide range of exemplary, but sometimes generic, drivers and interfaces, ranging
`
`from hard drives, floppy disk drives, CD-ROMs, tape drives, SCSI, etc., and the
`
`expanding of technology can cause the number of drives, devices, etc., which
`
`qualify as “customary” to increase over time. Id. at 3:33-50.
`
`There is no indication that the driver was limited to one from the time of the
`
`invention; the patent’s focus is leveraging drivers normally available in commercial
`
`computers. Petitioner’s proposal would exclude preferred, disclosed embodiments
`
`and should be rejected. See Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
`
`616 F.3d 1283, 1290 (Fed. Cir. 2010) (“A claim construction that excludes the
`
`preferred embodiment is rarely, if ever, correct and would require highly persuasive
`
`evidentiary support.”) (internal quotations omitted).
`
`E. SUMMARY OF PATENT OWNER’S ARGUMENTS
`
`
`
`9
`
`
`
`
`
`
`
`
`
`The Board has discretion to “deny some or all grounds for unpatentability for
`
`some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Petitioner bears the
`
`burden of demonstrating a reasonable likelihood that it would prevail in showing
`
`unpatentability on the grounds asserted in the Petition. 37 C.F.R. § 42.108(c).
`
`While it is not required to file a preliminary response, Patent Owner takes this
`
`limited opportunity to explain the reasons the Board should not institute trial. 37
`
`C.F.R. § 42.107(a).
`
`First, the Board should reject the Petition because Petitioner proposes
`
`horizontally redundant grounds of invalidity without adequately explaining how
`
`any particular reference used in any particular ground more closely satisfies a
`
`claim limitation in some respect than another reference used in another ground.
`
`This violates Board precedent requiring petitioners to identify meaningful
`
`differences in the proposed rejections. Petitioner filed five (5) separate IPR
`
`petitions against the ‘437 Patent that collectively assert grounds of rejection based
`
`on five different primary prior art references without adequate explanation about
`
`why some of these primary references more closely satisfy certain limitations of
`
`the ‘437 Patent than other primary references. Accordingly, the Board should
`
`exercise its discretion and deny this Petition under 35 U.S.C. §§ 315(d) and 325(d)
`
`and the redundancy principles established in Liberty Mutual Insurance Co. v.
`
`
`
`
`
`10
`
`
`
`
`
`Progressive Casualty Insurance Co., CBM2012-00003, Paper 7 (PTAB Oct. 25,
`
`2012).
`
`Second, Petitioner’s assertions of obviousness based on combining the
`
`primary reference, United States Patent No. 5,506,692 (“Murata”), with teachings
`
`of the secondary references are mere conclusory statements. Because Petitioner
`
`fails to provide a persuasive fact-based analysis with some rational underpinning to
`
`support these combination theories of obviousness, trial must be denied.
`
`Third, the Board should reject the Petition because Murata was explicitly
`
`addressed during the prosecution history of the ‘437 Patent. Under 35 U.S.C. §
`
`325(d), the Board may reject a Petition requesting institution of inter partes review
`
`because “the same or substantially the same prior art or arguments previously were
`
`presented to the Office.” 35 U.S.C. § 325(d) and 37 C.F.R. § 42.3(a). In the instant
`
`Petition involving the ‘437 Patent, just like in a similar Petition wherein the Board
`
`recently declined to institute inter partes review of related U.S. Patent No.
`
`8,966,144, “substantially the same argument regarding patentability of the claimed
`
`subject matter over Murata was previously presented to the Office.” IPR2016-
`
`01202, Paper 15 (Decision Denying Institution) at 12. Accordingly, the Board
`
`should exercise its discretion here and deny this Petition under 35 U.S.C. § 325(d).
`
`Patent Owner does not attempt to fully address the myriad of other
`
`
`
`
`
`11
`
`
`
`
`
`deficiencies of the underdeveloped grounds asserted in the Petition. See
`
`Travelocity.com L.P. et al. v. Cronos Technologies, LLC, CBM 2014-00082, Paper
`
`12 at 10 (PTAB Oct. 16, 2014) (“nothing may be gleaned from the Patent Owner’s
`
`challenge or failure to challenge the grounds of unpatentability for any particular
`
`reason”). However, the deficiencies addressed herein are dispositive and preclude
`
`trial on any asserted grounds.
`
`III. THE PETITION FAILS TO MEET THE REQUIREMENTS FOR
`INSTITUTING AN INTER PARTES REVIEW
`
`Trial should not be instituted because the Petition does not comply with at
`
`least three Board requirements. The Petition (1) violates the redundancy
`
`principles established by the Board; (2) contains only conclusory obviousness
`
`assertions; and (3) relies on the same prior art and arguments presented during the
`
`original prosecution of the ‘437 Patent.
`
`A.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S REDUNDANT GROUNDS
`
`Petitioner filed five (5) separate IPR petitions related to the ‘437 Patent
`
`(IPR2016-01840, IPR2016-01841, IPR2016-01842, IPR2016-01844 and IPR2017-
`
`00156), using five (5) different primary references. Because no meaningful
`
`distinction between these petitions was made in the instant Petition, the Board
`
`should reject this Petition.
`
`
`
`
`
`12
`
`
`
`
`
`“[M]ultiple grounds, which are presented in a redundant manner by a
`
`petitioner who makes no meaningful distinction between them, are contrary to the
`
`regulatory and statutory mandates, and therefore are not all entitled to
`
`consideration.” Liberty Mut., CBM2012-00003, Paper 7 at 2. Such redundancies
`
`place a significant burden on both the Board and the Patent Owner, causing
`
`unnecessary delay and compromising the ability to complete review within the
`
`statutory deadline. Id. Eliminating redundant grounds streamlines and converges
`
`the issues. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 4-5
`
`(PTAB June 11, 2013).
`
`A redundancy analysis must focus on whether the petitioner articulated a
`
`meaningful distinction of the relative strengths and weaknesses of its application of
`
`the prior art to one or more claim limitations. EMC Corp. v. PersonalWeb Techs.,
`
`LLC, IPR2013-00087, Paper 25 at 3-4 (PTAB June 5, 2013). The Petitioner
`
`cannot evade the prohibition against horizontally redundant grounds by spreading
`
`them among multiple petitions. SAS Inst. Inc. v. Complementsoft, LLC, IPR2013-
`
`00581, Paper 15 (PTAB Dec. 30, 2013).
`
`Horizontal redundancy exists when proposed grounds apply “a plurality of
`
`prior art references. . . not in combination to complement each other but as distinct
`
`and separate alternatives. Liberty Mut., CBM2012-00003, Paper 7 at 3.
`
`
`
`
`
`13
`
`
`
`
`
`Redundant references “provide essentially the same teaching to meet the same
`
`claim limitation, and the associated arguments do not explain why one reference
`
`more closely satisfies the claim limitation at issue in some respects than another
`
`reference, and vice versa.” Id. (emphasis in original).
`
`Petitioner has collectively raised twenty (20) grounds of unpatentability
`
`against overlapping challenged claims in its five (5) related petitions involving the
`
`‘437 Patent. Petitioner’s grounds, filed serially across these five (5) petitions are
`
`as follows:
`
`Proceeding Patent Claims Ground and References
`2016-
`1, 4-6, 9-16,
`§103 Kawasaki/Alon/Schmidt
`01840
`18, 30, 34, 43,
`§103 Kawasaki/Alon/Schmidt/Van Sant
`45
`§103 Kawasaki/Alon/Schmidt/Ogami
`§103 Kawasaki/Alon/Schmidt/Sangveraphunsiri
`§103 Murata/Salomon/Schmidt
`§103 Murata/Salomon/Schmidt/Araghi
`§103 Murata/Salomon/Schmidt/Compton
`§103 Murata/Salomon/Schmidt/Reisch
`§103 Pucci/Kepley/Schmidt
`§103 Pucci/Kepley/Schmidt/Shinosky
`§103 Pucci/Kepley/Schmidt/Campbell
`§103 Pucci/Kepley/Schmidt/Wilson
`§103 Pucci/Schmidt
`§103 Pucci/Schmidt/Campbell
`§103 Ard/Salomon/Schmidt
`§103 Ard/Salomon/Schmidt/Araghi
`§103 Ard/Salomon/Schmidt/Compton
`§103 Ard/Salomon/Schmidt/Reisch
`§103 Moriyasu/Ousely
`§103 Moriyasu/Ousely/Williams
`
`2016-
`01841
`
`2016-
`01842
`
`2016-
`01844
`
`2016-
`00156
`
`1, 4-6, 9-16,
`18, 30, 32, 34,
`43, 45
`
`1, 4-6, 9-16,
`18, 30, 32, 34,
`43, 45
`
`1, 4-6, 9-16,
`18, 30, 32, 34,
`43, 45
`
`1, 4-6, 9-16,
`18, 30, 32, 34
`
`
`
`
`
`14
`
`
`
`
`
`
`
`By way of example, Petitioner uses Murata as the primary reference to
`
`challenge the various claims of the ‘437 Patent in the instant Petition. This
`
`analysis is redundant of the other Petitions which utilize Kawasaki, Pucci, Ard and
`
`Moriyasu as primary references to challenge the same claims. Petitioner only
`
`provides a very brief explanation regarding the redundancy issue at the end of the
`
`Petition. Paper 2 (Petition) at 62-63. Petitioner merely states:
`
`Petitioner’s three primary grounds against the ’437 patent
`based on non-intervening prior art—Murata, Kawasaki,
`and Pucci (the latter two in concurrently-filed petitions)—
`are not redundant. Each of the primary references has
`unique strengths. Murata discloses a disk-emulating
`scanner that interfaces a light-sensing CCD—contained
`within the scanner—to a computer using a SCSI interface,
`but provides few details on the recognition process. In
`contrast, Kawasaki discloses a hard disk emulator,
`operable according to interface specifications of an
`arbitrary hard disk drive, that interfaces an optical disk
`drive to a computer. But Kawasaki does not provide
`detail about the interface between the hard disk emulator
`and the computer. Pucci describes a node that emulates a
`large hard disk to a number of workstations to act as a
`digital voice mail system, but provides limited detail on
`the SCSI emulation.
`
`Obviously, the above-quoted explanation fails to discuss how any of the
`
`
`
`alleged distinctions between the primary references are relevant to any particular
`
`claim limitation at issue or why some of the references are stronger or weaker as
`
`
`
`
`
`15
`
`
`
`
`
`applied to any given limitation of the ‘437 Patent. Moreover, the Petition fails to
`
`even mention the ‘437 Patent IPR petitions that involve the use of Ard and
`
`Moriyasu as primary references. Petitioner relies on multiple references to provide
`
`essentially the same teaching to meet the same claim limitations without providing
`
`any explanation for why one reference more closely satisfies given limitations than
`
`another reference.
`
`Filing numerous IPR petitions for the purpose of circumventing the word
`
`count requirement of 37 C.F.R. § 42.24(a) is also an inappropriate excuse for filing
`
`multiple petitions. SAS Inst. Inc. v. Complementsoft, LLC, IPR2013-00581, Paper
`
`17 (PTAB Feb. 24, 2014). The Petitioner has an obligation to advance its most
`
`salient grounds in one petition or to explain in detail why that cannot be
`
`accomplished due to the relative strengths and weaknesses of particular prior art
`
`applied to particular claims that need to be addressed in multiple grounds/petitions.
`
`Id. Absent such an explanation, the Board should not institute trial because the
`
`serial filing of petitions creates undue burden on the Patent Owner and Board and
`
`conflicts with the very purpose of IPRs—to secure the “just, speedy, and
`
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b).
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE
`PETITION’S
`CONCLUSORY
`OBVIOUSNESS
`COMBINATIONS
`
`16
`
`B.
`
`
`
`
`
`
`
`
`
`
`
`
`35 U.S.C. § 103 states, “[a] patent for a claimed invention may not be
`
`obtained, notwithstanding that the claimed invention is not identically disclosed as
`
`set forth in section 102, if the difference between the claimed invention and the
`
`prior art are such that the claimed invention as a whole would have been obvious
`
`before the effective filing date of the claimed invention to a person having ordinary
`
`skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103.
`
`
`
`As required by MPEP 2143.01, obviousness can be established by
`
`combining or modifying the teachings of the prior art to produce the claimed
`
`invention where there is some teaching, suggestion, or motivation to do so. In re
`
`Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (discussing rationale underlying the
`
`motivation-suggestion-teaching test as a guard against using hindsight in an
`
`obviousness analysis). More specifically, in accordance with MPEP 2143.01(IV),
`
`a statement that modification of the prior art to meet the claimed invention would
`
`have been well within the ordinary skill of the art at the time the claimed invention
`
`was made because the references relied upon teach that all aspects of the claimed
`
`invention were individually known in the art is not sufficient to establish a prima
`
`facie case of obviousness without some objective reason to combine the teachings
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`of the references. Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics
`
`Rencol Ltd., IPR2014-00309, Paper 83 at 19 (PTAB Mar. 23, 2014); see also Ex
`
`
`
`
`
`17
`
`
`
`
`
`parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993). “Rejections on
`
`obviousness cannot be sustained by mere conclusory statements; instead, there
`
`must be some articulated reasoning with some rational underpinning to support the
`
`legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`
`(2007). In this respect, to establish a prima facie case of obviousness, it is
`
`necessary to present a showing that the references relied upon teach all aspects of
`
`the claimed invention and to present an articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness to combine the
`
`teachings of the references.
`
`
`
`The Board has previously denied petitions on obviousness grounds because
`
`the Petitioner failed to explain how references may be combined and why the
`
`combination accounts for all features of the claims. Dell, Inc. v. Elecs. &
`
`Telecommc’ns Res. Inst., IPR2014-00152, Paper 12 at 26-28 (PTAB May 16,
`
`2014); see also Dominion Dealer Sols., LLC v. Autoalert, Inc., IPR2013-00223,
`
`Paper 9 at 19 (PTAB Aug. 15, 2013).
`
`Here, Petitioner makes very little effort to explain why the various
`
`references that allegedly disclose all of the limitations of the asserted claims of the
`
`‘437 Patent should or could be combined. Petitioner states, for example, “[t]he
`
`combination of Murata and Schmidt would have been nothing more than the
`
`
`
`
`
`18
`
`
`
`
`
`application of a known technique (SCSI device recognition process) to a known
`
`device (Murata’s SCSI scanner) to yield predictable results (identification of the
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`scanner as a hard disk using routine SCSI signaling).” Paper 2 (Petition) at 13.
`
`This same style of conclusory analysis was used throughout the Petition to
`
`combine the references. Id. at 17, 19, 25, 27-30, 37, 40-42, 45, 51 and 58.
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`However, the Board has determined that this type of analysis is insufficient
`
`for asserting obviousness. TRW Automotive US LLC v. Magna Electronics Inc.,
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`IPR2014-00258, Paper 16 at 15 (PTAB June 26, 2014). In TRW, the Board
`
`determined that “TRW does not support its ‘simple substitution’ or ‘obvious to try’
`
`rationales with explanation or evidence. Id. TRW does not explain, for instance,
`
`why the alleged combination would be a ‘simple’ substitution achieving
`
`‘predictable results,’ or why selecting Bottesch’s array, as opposed to any other,
`
`would be a choice from a ‘finite number’ of solutions with a ‘reasonable
`
`expectation of success.’” Id. The Board also determined that TRW’s rationale for
`
`combining certain references was conclusory when the only explanation offered
`
`was because “doing so would be nothing more than [the] use of a known technique
`
`to improve similar devices in the same way,” and “such combination would also be
`
`tantamount to combining prior art elements according to known methods to yield
`
`predictable results.” Id. at 16. Consequently, Petitioner’s similar analysis in the
`
`
`
`
`
`19
`
`
`
`
`
`instant Petition does not meet the standards set forth in 35 U.S.C. § 103 and
`
`institution should be denied.
`
`In a recent decision, the Federal Circuit also identified several insufficient
`
`articulations of a motivation to combine references in an obviousness rejection. In
`
`re Nuvasive, Inc., No. 2015-1670 (Fed. Cir. December 7, 2016). The Federal
`
`Circuit stated:
`
`insufficient
`some
`identified
`We have, however,
`articulations of motivation to combine. First, “conclusory
`statements” alone are insufficient and, instead, the finding
`must be supported by a “reasoned explanation.” Lee, 277
`F.3d at 1342, 1345. Second, it is not adequate to
`summarize and reject arguments without explaining why
`the PTAB a
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