`
`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 IPR2016-01844
`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.................................. 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................................................................................... 15
`
`C.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BECAUSE
`ARD IS NOT PRIOR ART .................................................................... 19
`IV. CONCLUSION .............................................................................................. 27
`
`
`
`i
`
`
`
`
`
`
`Ex. No.
`2001
`2002
`
`2003
`
`
`
`
`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
`IEEE Standard Signaling Method for a Bidirectional Parallel
`Peripheral Interface for Personal Computers, IEEE Std 1284-1994
`
`
`Previously Filed – Petitioner
`
`
`Ex. No.
`1001
`1002
`1003
`
`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, 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
`1013
`Microsoft Computer Dictionary, Third Edition, Microsoft Press, 1997
`1014
`1015-1017 Intentionally left blank
`The IEEE Standard Dictionary of Electrical and Electronics Terms,
`1018
`
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`
`
`
`ii
`
`
`
`1019
`1020
`
`1031
`
`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
`1021-1023 Intentionally left blank
`1024
`Declaration of Scott Bennett
`Intentionally left blank
`1025
`U.S. Patent No. 4,698,131 to Araghi et al.
`1026
`1027
`U.S. Patent No. 5,442,465 to Compton
`1028
`U.S. Patent No. 5,706,216 to Reisch
`U.S. Patent No. 4,430,673 to Salomon et al.
`1029
`1030
`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”)
`1032-1036 Intentionally left blank
`U.S. Patent No. 6,111,831 to Alon et al.
`1037
`1038-1045 Intentionally left blank
`1046
`U.S. Patent No. 5,915,106 to Ard
`1047-1048 Intentionally left blank
`’144 German Application (DE 197 08 755)
`1049
`’144 German Application Translated (DE 197 08 755)
`1050
`1051-1053 Intentionally left blank
`Livingston, Brian “Windows 3.1 Secrets”
`1054
`1055
`RFC 1314, “A File Format for the Exchange of Images in the
`Internet,” published April 1992, https://tools.ietf.org/pdf/rfc1314.pdf,
`Intentionally left blank
`MacPaint Manual
`
`1056
`1057
`
`
`
`
`
`
`
`
`
`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 February 1,
`
`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 ‘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
`
`1:42-57. 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 1:26-3:25.
`
`The ‘437 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 2:20-41 and 3:29-32. 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 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,
`
`7:38-9:3, 9:18-23 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 10:23-29; 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 . . .”), 5:15-25 (describing the
`
`use 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 5:11-17
`
`(“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 ‘437 Patent’s
`
`interface device instead of, or in addition to, customary drivers which reside in the
`
`BIOS. Id. at 10:23-26. 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.
`
`As is apparent from the title of the ’437 Patent, the interface device
`
`disclosed 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 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.
`
`
`
`4
`
`
`
`
`
`LEVEL OF ORDINARY SKILL IN THE ART
`“The person of ordinary skill in the art is a hypothetical person who is
`
`C.
`
`
`
`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.
`
`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
`
`1:9-13. 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)).
`
`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 16-17.
`
`
`
`7
`
`
`
`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 17. 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.”
`
`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 specification 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
`
`
`
`8
`
`
`
`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
`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
`
`
`
`9
`
`
`
`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 (5) 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. 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 ‘437 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
`
`
`
`10
`
`
`
`intervening reference because none of the challenged claims are entitled to priority
`
`benefit of the German application. Paper 2 (Petition) at 1, 9. Petitioner’s argument
`
`however is meritless because the Petition fails to show the German application
`
`lacks written description for a “multi-purpose interface” or the “end user file
`
`system” limitations. Because the German application provides written description
`
`for these limitations, the ‘437 Patent is entitled to a priority date of March 4, 1997
`
`prior to the date of 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
`
`
`
`11
`
`
`
`of 35 U.S.C. § 102.
`
`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, IPR2016-1842, 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.
`
`“[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
`
`
`
`12
`
`
`
`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.
`
`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 five (5) 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/Sanveraphunsiri
`§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 Jr.
`
`2016-
`01841
`
`2016-
`01842
`
`1, 4-6, 9-16,
`18, 30, 32, 34,
`43, 45
`
`1, 4-6, 9-16,
`18, 30, 32, 34,
`43, 45
`
`
`
`13
`
`
`
`§103 Pucci/Kepley/Schmidt/Wilson
`§103 Pucci/Schmidt
`§103 Pucci/Schmidt/Campbell Jr.
`§103 Ard/Salomon/Schmidt
`§103 Ard/Salomon/Schmidt/Araghi
`§103 Ard/Salomon/Schmidt/Compton
`§103 Ard/Salomon/Schmidt/Reisch
`§103 Moriyasu/Ousley
`§103 Moriyasu/Ousley/Williams
`
`1, 4-6, 9-16,
`30, 32, 34, 43,
`45
`
`1, 4-6, 9-16,
`18, 30, 32, 34
`
`2016-
`01844
`
`2017-
`00156
`
`
`
`By way of example, Petitioner uses Ard 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 Murata, Pucci, Kawasaki
`
`and Moriyasu 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 ‘437 Patent.
`
`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
`
`
`
`14
`
`
`
`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.
`
`
`
`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
`
`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
`
`
`
`15
`
`
`
`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 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 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
`
`16
`
`
`
`
`
`
`
`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, “a
`
`POSITA would have further found it obvious to store the ‘at least one instruction’
`
`in ‘program memory’ such as setup program storage area 47A or firmware storage
`
`area 47B because storing processor instructions in a memory was a well-known
`
`implementation.” Paper 2 (Petition) at 36. This same style of conclusory analysis
`
`was used to combine all of the prior art throughout the Petition. Id. at 49, 65.
`
`However, the Board has determined that this type of analysis is insufficient
`
`for asserting obviousness. TRW Automotive US LLC v. Magna Electronics Inc.,
`
`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,
`
`
`
`17
`
`
`
`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 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 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
`
`
`
`18
`
`
`
`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).
`
`Hence, the Federal Circuit has confirmed that conclusory remarks such as those
`
`advanced in the instant Petition are insufficient to establish a motivation to
`
`combine references for obviousness.
`
`C.
`
`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
`
`March 20, 1997. Exhibit 1046 (Ard). The Petition concedes that the “’437 patent
`
`claims priority through a series of continuation applications and a divisional
`
`application to U.S. Patent No. 6,470,399 which is the national stage of
`
`international application PCT/EP98/01187, filed on March 3, 1998.” Paper 2
`
`(Petition) at 4. “The ’437 patent further claims priority to a German application,
`
`filed on March 4, 1997.” Id. The ’437 Patent’s claim of priority thus predates the
`
`date of application of Ard, and Ard does not qualify as prior art under any section
`
`of 35 U.S.C. § 102. As Ard is not prior art,
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