`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2016-01843
`Patent 6,470,399
`_______________
`___________________________________
`
`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 ‘399 PATENT ................................................ 2
`
`LEVEL OF ORDINARY SKILL IN THE ART ................................. 5
`
`CLAIM CONSTRUCTION ................................................................ 7
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS .................... 9
`
`III. THE PETITION FAILS TO MEET THE REQUIREMENTS FOR
`INSTITUTING AN INTER PARTES REVIEW ................................................... 11
`
`A.
`
`B.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S REDUNDANT GROUNDS.................................. 11
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S CONCLUSORY OBVIOUSNESS
`COMBINATIONS ................................................................................... 14
`
`C.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BECAUSE
`ARD IS NOT PRIOR ART ..................................................................... 18
`IV. CONCLUSION ............................................................................................. 24
`
`
`
`
`i
`
`
`
`EXHIBIT LIST
`
`Currently Filed – Patent Owner
`
`
`Description
`Declaration of Dr. Kenneth Fernald
`In re Papst Licensing GmbH & Co. Litigation, Case No. 7-cv-493
`(D.D.C.), Order Regarding Claim Construction
`Defendants’ Responsive Claim Construction Brief in Papst Licensing
`GmbH & Co., KG v. Apple, Inc. (6:15-CV-01095-RWS)
`IEEE Standard Signaling Method for a Bidirectional Parallel
`Peripheral Interface for Personal Computers, IEEE Std 1284-1994
`
`
`Previously Filed – Petitioner
`
`Description
`U.S. Patent 6,470,399 to Tasler
`File History for U.S. Patent 6,470,399
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 6,470,399
`Curriculum Vitae of Dr. Erez Zadok
`Intentionally left blank
`Intentionally left blank
`The SCSI Bus and IDE Interface Protocols, Applications and
`Programming, by Schmidt, First Edition, Addison-Wesley, 1995
`Intentionally left blank
`U.S. Patent No. 4,727,512 to Birkner
`U.S. Patent No. 4,792,896 to Maclean
`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
`
`ii
`
`
`
`
`Ex. No.
`2001
`2002
`
`2003
`
`2004
`
`
`
`
`
`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
`
`In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d
`1255 (Fed. Cir. 2015).
`The Art of Electronics, by Horowitz et al., First Edition, Cambridge
`University Press, 1980.
`The IEEE Standard Dictionary of Electrical and Electronics Terms,
`Sixth Edition, 1996.
`Webster’s Encyclopedic Unabridged Dictionary of the English
`Language, Random House, 1996.
`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 Conversion,” Intersil Application
`Note, October 1986.
`“Sample-and-Hold Amplifiers,” Analog Devices MT-090 Tutorial,
`2009.
`Declaration of Scott Bennett
`Discrete-Time Signal Processing, by Oppenheim et al., First Edition,
`Prentice-Hall, 1989
`1026-1030 Intentionally left blank
`1031
`Plug-and-Play SCSI Specification, Version 1.0, dated March 30, 1994
`(“PNP SCSI”)
`Intentionally left blank
`1032
`U.S. Patent No. 4,970,605 to Fogaroli et al.
`1033
`1034-1045 Intentionally left blank
`1046
`U.S. Patent No. 5,915,106 to Ard, titled “Method and System for
`Operating a Scanner Which Emulates a Disk Drive”
`U.S. Patent No. 5,303,064 to Johnson et al., titled “Image Scanner
`with Calibration Mechanism to Obtain Full Dynamic Range and
`Compensated Linear Output”
`U.S. Patent No. 5,489,772 to Webb et al., titled “Variable Optical
`Sampling Rate Dependent on Requested Scan Resolution”
`’399 German Application (DE 197 08 755)
`’399 German Application Translated (DE 197 08 755)
`Foley, Computer Graphics: Principles and Practice, 2d Edition, 1987
`
`1047
`
`1048
`
`1049
`1050
`1051
`
`
`
`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
`
`Pursuant to 35 U.S.C. § 314(a), Patent Owner respectfully requests that the
`
`
`
`1
`
`
`
`Board deny institution of a trial with respect to all claims of the ‘399 Patent.
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘399 PATENT
`The ’399 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 (’399 Patent) at 4:23-27. 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
`
`1:34-52. As such, there was an increasing demand to transfer that information to
`
`commercially-available, general purpose computers. Id. at 1:20-32. 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 1:17-3:21.
`
`The ‘399 Patent recognizes that the existing options were wasteful and
`
`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 2:17-36 and 3:24-27. The
`
`
`
`2
`
`
`
`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 5:6-20. 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 3:24-27,
`
`8:23-9:58, 9:23-34, 10:6-12 and 12:23-41. The ’399 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 3:24-27.
`
`The interface device disclosed in the ‘399 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 11:9-15; see also id. at 5:13-17 (“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 . . .”), 6:2-9 (describing the use
`
`of “usual BIOS routines” to issue INQUIRY instructions to the interface), and
`
`8:43-50 (describing use of BIOS routines). Similarly, the written description
`
`describes also using drivers included in the operating system. Id. at 5:64-6:3
`
`(“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
`
`
`
`3
`
`
`
`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 ‘399 Patent’s
`
`interface device instead of, or in addition to, customary drivers which reside in the
`
`BIOS. Id. at 11:9-12. Accordingly, the ’399 Patent contemplated a universal
`
`interface device that could operate independent of the manufacturer of the
`
`computer. Id. at 12:23-40. 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 ‘399
`
`Patent’s interface device to connect to a variety of different standard interfaces that
`
`could be present in a host computer. Id. at 9:30-47 and FIG. 2.
`
`As is apparent from the title of the ’399 patent, the interface device disclosed
`
`is capable of acquiring and processing analog data. As shown in FIG. 2
`
`reproduced below, the ’399 Patent discloses that the interface device 10 has an
`
`analog
`
`input at connection 16 for receiving analog 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 9:49-64 and 10:27-41.
`
`
`
`4
`
`
`
`
`
`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
`
`
`
`
`
`(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 15. 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
`
`communication interfaces (e.g., SCSI, USB, PCMCIA).” Id. at 15-16.
`
`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 (’399 Patent) at
`
`1:9-13. 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
`
`
`
`6
`
`
`
`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 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)).
`
`
`
`7
`
`
`
`Petitioner proposes that a “data transmit/receive device” should be construed
`
`as “a device capable of transmitting or receiving data.”1 Paper 2 (Petition) at 18-
`
`19. Patent Owner disagrees with this construction. A district court has already
`
`interpreted a “data transmit/receive device,” as that term is used in the ‘399 Patent,
`
`as a device that “is capable of either (a) transmitting data to or (b) transmitting data
`
`to and receiving data from the host device,” and the Federal Circuit left that
`
`interpretation undisturbed. Exhibit 1016 (Federal Circuit Opinion) at 11.
`
`This “data transmit/receive device” construction is appropriate in view of the
`
`disclosure of the ‘399 Patent. For example, the very first paragraph of the ‘399
`
`Patent discussing the “Field of the Invention” states: “[t]he present 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 (’399 Patent) at 1:9-14. In all cases, transmission of
`
`data from the “data transmit/receive device” is necessary to permit the computer or
`
`host device to acquire data from the “data transmit/receive device” or to permit
`
`two-way communication with it in the form of transmission and reception of data
`
`1 Petitioner’s proposed construction for this term in this proceeding is different
`from its proposed construction in the underlying District Court litigation where
`Petitioner proposed that a “data transmit/receive device” is “a device that is
`capable of transmitting analog data to and receiving data from the host device and
`that is capable of actively communicating with the host device.” Exhibit 2003
`(Defendants’ Responsive Claim Construction Brief) at 32.
`8
`
`
`
`
`
`to and from
`
`the “data
`
`transmit/receive” device.
`
` Accordingly, a “data
`
`transmit/receive device,” as that term is used in the ’399 Patent, is “a device that is
`
`capable of either (a) transmitting data or (b) transmitting data and receiving data.”
`
`
`
`E. SUMMARY OF PATENT OWNER’S ARGUMENTS
`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 three (3) separate IPR
`
`petitions against the ‘399 Patent that collectively assert grounds of rejection based
`
`on four (4) different primary prior art references without adequate explanation
`
`about why some of these primary references more closely satisfy certain
`
`
`
`9
`
`
`
`limitations of the ‘399 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. 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. 5,915,106 (“Ard”), 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, every ground recited in the Petition relies on Ard which was filed on
`
`March 20, 1997. Exhibit 1046 (Ard). The ‘399 Patent claims priority to a German
`
`application filed March 4, 1997 which predates Ard. Ard therefore fails to qualify
`
`as prior art under any section of 35 U.S.C. § 102. Petitioner argues Ard is an
`
`intervening reference because none of the challenged claims are entitled to priority
`
`benefit of the German application. Paper 2 (Petition) at 1, 10. Petitioner’s
`
`argument however is meritless because the Petition fails to show the German
`
`application lacks written description for a “multi-purpose interface.” Since the
`
`German application provides written description of a multi-purpose interface, the
`
`‘399 patent is entitled to a priority date of March 4, 1997 prior to the date of
`
`
`
`10
`
`
`
`application of Ard. Ard therefore does not qualify as prior art, and the Petition
`
`should be denied.
`
`Patent Owner does not attempt to fully address the myriad of other
`
`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) applies art that does not qualify as prior art under any section
`
`of 35 U.S.C. § 102.
`
`A.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S REDUNDANT GROUNDS
`Petitioner filed three (3) separate IPR petitions related to the ‘399 Patent
`
`(IPR2016-01839, IPR2016-01843, and IPR2016-01864), using four (4) different
`
`primary references. Because no meaningful distinction between these petitions
`
`
`
`11
`
`
`
`was made in the instant Petition, the Board should reject this Petition.
`
`“[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.
`
`
`
`12
`
`
`
`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 six (6) grounds of unpatentability against
`
`overlapping challenged claims in its three (3) related petitions involving the ‘399
`
`Patent. Petitioner’s grounds, filed serially across these three (3) petitions are as
`
`follows:
`
`Proceeding Patent Claims Ground and References
`2016-
`1, 3, 5, 11, 14,
`§103 Kawaguchi/Schmidt
`01839
`15
`§103 Murata/Schmidt
`2016-
`1, 3, 5, 11, 14,
`§103 Ard/Schmidt/Webb
`01843
`15
`§103 Ard/Schmidt/Webb/Johnson
`2016-
`1, 3, 5, 11, 14,
`§103 Pucci/Kepley/Schmidt
`01864
`15
`§103 Pucci/Kepley/Schmidt/Li
`
`
`By way of example, Petitioner uses Ard as the primary reference to
`
`challenge the various claims of the ‘399 Patent in the instant Petition. This
`
`analysis is redundant of the other Petitions which utilize Murata, Pucci and
`
`Kawaguchi as primary references to challenge the same claims. Petitioner
`
`provides no explanation for the necessity of these redundant grounds and fails to
`
`discuss how any 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 applied to any given limitation of the ‘399 Patent.
`13
`
`
`
`
`
`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).
`
`B.
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`
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE
`PETITION’S
`CONCLUSORY
`OBVIOUSNESS
`COMBINATIONS
`
`
`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
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`
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`14
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`
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`prior art are such that the claimed invention as a whole would have been obvious
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`before the effective filing date of the claimed invention to a person having
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`ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. §
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`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
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`invention where there is some teaching, suggestion, or motivation to do so. In re
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`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
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`obviousness analysis). More specifically, in accordance with MPEP 2143.01(IV),
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`a statement that modification of the prior art to meet the claimed invention would
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`have been well within the ordinary skill of the art at the time the claimed
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`invention was made because the references relied upon teach that all aspects of
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`the claimed invention were individually known in the art is not sufficient to
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`establish a prima facie case of obviousness without some objective reason to
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`combine the teachings of the references. Intri-Plex Techs., Inc. v. Saint-Gobain
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`Performance Plastics Rencol Ltd., IPR2014-00309, Paper 83 at 19 (PTAB Mar.
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`23, 2014); see also Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter.
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`1993). “Rejections on obviousness cannot be sustained by mere conclusory
`
`statements; instead, there must be some articulated reasoning with some rational
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`
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`15
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`
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`underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007). In this respect, to establish a prima facie
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`case of obviousness, it is necessary to present a showing that the references relied
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`upon teach all aspects of the claimed invention and to present an articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness to combine the teachings of the references.
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`
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`The Board has previously denied petitions on obviousness grounds because
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`the Petitioner failed to explain how references may be combined and why the
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`combination accounts for all features of the claims. Dell, Inc. v. Elecs. &
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`Telecommc’ns Res. Inst., IPR2014-00152, Paper 12 at 26-28 (PTAB May 16,
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`2014); see also Dominion Dealer Sols., LLC v. Autoalert, Inc., IPR2013-00223,
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`Paper 9 at 19 (PTAB Aug. 15, 2013).
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`Here, Petitioner makes very little effort to explain why the various
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`references that allegedly disclose all of the limitations of the asserted claims of the
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`‘399 Patent should or could be combined. Petitioner states, for example, “it
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`would have been obvious to a person of ordinary skill in the art for Ard’s scanner
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`to interpret SCSI READ command ‘as a data transfer command for initiating a
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`transfer of the digital data to the host device.’” Paper 2 (Petition) at 54. “This
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`combination would result from the application of a known technique (interpreting
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`a SCSI READ command as a request for data transfer) to a known device (Ard’s
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`
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`16
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`
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`disk drive-emulating SCSI scanner) for a known purpose (transferring data).” Id.
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`This same style of conclusory analysis was used to combine all of the prior art
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`throughout the Petition. Id. at 15, 16, 30, 31, 36, 38-40, 43 and 45-49.
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`However, the Board has determined that this type of analysis is insufficient
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`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
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`determined that “TRW does not support its ‘simple substitution’ or ‘obvious to
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`try’ rationales with explanation or evidence.” Id. “TRW does not explain, for
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`instance, why the alleged combination would be a ‘simple’ substitution achieving
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`‘predictable results,’ or why selecting Bottesch’s array, as opposed to any other,
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`would be a choice from a ‘finite number’ of solutions with a ‘reasonable
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`expectation of success.’” Id. The Board also determined that TRW’s rationale for
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`combining certain references was conclusory when the only explanation offered
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`was because “doing so would be nothing more than [the] use of a known
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`technique to improve similar devices in the same way,” and “such combination
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`would also be tantamount to combining prior art elements according to known
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`methods to yield predictable results.” Id. at 16. Consequently, Petitioner’s
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`similar analysis in the instant Petition does not meet the standards set forth in 35
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`U.S.C. § 103 and institution should be denied.
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`In a recent decision, the Federal Circuit also identified several insufficient
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`17
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`
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`articulations of a motivation to combine references in an obviousness rejection.
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`In re Nuvasive, Inc., No. 2015-1670 (Fed. Cir. December 7, 2016). The Federal
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`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 accepts
`the prevailing
`argument. See Cutsforth, Inc. v. Motive Power, Inc., 636
`F. App’x 575, 578 (Fed. Cir. 2016) (“The majority of the
`[PTAB]’s Final Written Decision is spent summarizing
`the parties’ arguments and offers only conclusory
`analysis of its own. While the decision does specify
`when it is rejecting a party’s argument, the [PTAB] does
`not explain why it accepts the remaining arguments as its
`own analysis. This leaves little explanation for why the
`[PTAB] found the claimed invention obvious.”).
`
`In re Nuvasive, Inc., No. 2015-1670 at 10-11 (Fed. Cir. December 7, 2016).
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`Hence, the Federal Circuit has confirmed that conclusory remarks such as those
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`advanced in the instant Petition are insufficient to establish a motivation to
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`combine references for obviousness.
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`C.
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`THE BOARD SHOULD NOT INSTITUTE TRIAL BECAUSE
`ARD IS NOT PRIOR ART UNDER ANY SECTION OF 35
`U.S.C. § 102
`
`Every ground recited in the Petition relies on Ard which was filed on
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`March 20, 1997. Exhibit 1046 (Ard). The Petition concedes that the “’399 patent
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`is the national stage of international application PCT/EP98/01187, filed on March
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`
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`18
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`
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`3, 1998.” Paper 2 (Petition) at 4. “The ’399 patent further claims priority to a
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`German application, filed on March 4, 1997.” Id. The ’399 Patent’s claim of
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`priority thus predates the date of application of Ard, and Ard does not qualify as
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`prior art under any section of 35 U.S.C. § 102. As Ard is not prior art, the Petition
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`should be denied for this reason alone.
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`Petitioner argues Ard is prior art because the “[t]he challenged claims of the
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`’399 Patent are not entitled to priority benefit of the ’399 German application
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`because the ’399 German application does not provide written description support
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`for