`
`
`
`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 IPR2016-01862
`Patent 8,504,746
`_______________
`___________________________________
`
`
`
`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 ........................................ 2
`
`OVERVIEW OF THE ‘746 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 ................................................................................... 15
`
`C.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BECAUSE
`ARD IS NOT PRIOR ART ..................................................................... 19
`IV. CONCLUSION ............................................................................................. 27
`
`
`
`i
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`Currently Filed – Patent Owner
`
`Ex. No.
`2001
`2002
`
`2003
`
`2004
`
`
`
`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
`
`
`Ex. No.
`1001
`1002
`1003
`
`Description
`U.S. Patent 8,504,746 to Tasler
`Excerpts of File History of U.S. Patent 8,504,746 to Tasler
`Declaration of Dr. Erez Zadok in Support of Petition for Inter Partes
`Review of U.S. Patent No. 8,504,746
`Curriculum Vitae of Dr. Erez Zadok
`1004
`1005-1006 Intentionally Left Blank
`The SCSI Bus and IDE Interface Protocols, Applications and
`1007
`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
`In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d
`1255 (Fed. Cir. 2015).
`1017-1018 Intentionally Left Blank
`
`1008
`1009
`1010
`1011
`1012
`
`1013
`1014
`1015
`1016
`
`
`
`ii
`
`
`
`
`
`1019
`
`1020
`
`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
`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
`Intentionally Left Blank
`1027
`U.S. Patent No. 5,706,216 to Reisch
`1028
`1029-1030 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
`U.S. Patent No. 5,623,556 to Murayama et al.
`1034
`U.S. Patent No. 5,196,946 to Balkanski et al.
`1035
`1036-1045 Intentionally Left Blank
`1046
`U.S. Patent No. 5,915,106 to Ard
`Intentionally Left Blank
`1047
`U.S. Patent No. 5,489,772 to Webb et al.
`1048
`1049
`German Patent Application DE 197 08 755 A1 to Tasler
`1050
`German Patent Application DE 197 08 755 A1 to Tasler (English
`Translation)
`1051-1053 Intentionally Left Blank
`1054
`Livingston, Brian “Windows 3.1 Secrets” (1992)
`1055
`RFC 1314, “A File Format for the Exchange of Images in the
`Internet,” published April 1992, https://tools.ietf.org/pdf/rfc1314.pdf
`U.S. Patent No. 5,300,767 to Steinle et al.
`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 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.
`
`
`
`
`
`1
`
`
`
`
`
`
`
`STATEMENT OF RELIEF REQUESTED
`A.
`Pursuant to 35 U.S.C. § 314(a), Patent Owner respectfully requests that the
`
`Board deny institution of a trial with respect to all claims of the ‘746 Patent.
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘746 PATENT
`The ’746 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 (‘746 Patent) at 3:32-36. 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
`
`1:44-62. As such, there was an increasing demand to transfer that information to
`
`commercially-available, general purpose computers. Id. at 1:31-43. 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 1:26-3:24.
`
`The ‘746 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 2:22-41 and 3:28-31. 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 4:13-27. 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 3:28-31,
`
`3:32-45, 7:32-65, 8:29-36, 9:16-19 and 11:29-46. The ’746 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 3:28-31.
`
`The interface device disclosed in the ‘746 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 10:16-17; see also id. at 4:20-24 (“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 . . .”), 5:14-20 (describing the use
`
`of “usual BIOS routines” to issue INQUIRY instructions to the interface), and 7:51-
`3
`
`
`
`
`
`
`
`58 (describing use of BIOS routines). Similarly, the written description describes
`
`also using drivers included in the operating system. Id. at 5:8-11 (“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 ‘746 Patent’s interface device
`
`instead of, or in addition to, customary drivers which reside in the BIOS. Id. at
`
`10:14-20. Accordingly, the ‘746 Patent contemplated a universal interface device
`
`that could operate independent of the manufacturer of the computer. Id. at 11:29-
`
`46. 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 ‘746 Patent’s interface
`
`device to connect to a variety of different standard interfaces that could be present
`
`in a host computer. Id. at 8:37-54 and FIG. 2.
`
`As is apparent from the title of the ‘746 patent, the interface device disclosed
`
`is capable of acquiring and processing analog data. As shown in FIG. 2 reproduced
`
`below, the ‘746 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
`4
`
`
`
`
`
`
`
`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 8:55-9:3 and 9:34-49.
`
`
`
`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 15-16. 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
`
`
`
`6
`
`
`
`
`
`computer components and peripherals (e.g., mass storage device drivers), and
`
`communication interfaces (e.g., SCSI, USB, PCMCIA).” Id. at 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 (‘746 Patent) at
`
`1:20-24. 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
`7
`
`
`
`
`
`
`
`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 a “data transmit/receive device” should be construed
`
`as “a device capable of transmitting or receiving data.”1 Paper 2 (Petition) at 17.
`
`Patent Owner disagrees with this construction. A district court has already
`
`interpreted a “data transmit/receive device,” as that term is used in patents related to
`
`the ‘746 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.
`
`
`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
`
`
`
`
`
`
`
`This “data transmit/receive device” construction is appropriate in view of the
`
`disclosure of the ‘746 Patent. For example, the very first paragraph of the ‘746
`
`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 (‘746 Patent) at 1:20-24. 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 to and from
`
`the “data transmit/receive device.” Accordingly, a “data transmit/receive device,”
`
`as that term is used in the ‘746 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
`9
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`
`
`
`
`
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`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 ‘746 Patent that collectively assert grounds of rejection based
`
`on three (3) different primary prior art references without adequate explanation
`
`about why some of these primary references more closely satisfy certain
`
`limitations of the ‘746 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
`10
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`
`
`
`
`
`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 ‘746 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 5. Petitioner’s
`
`argument however is meritless because the Petition fails to show the German
`
`application lacks written description for a “multi-purpose interface” or a “file
`
`system.” Since the German application provides written description for these
`
`contested terms, the ‘746 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
`11
`
`
`
`
`
`
`
`reason”). However, the deficiencies addressed herein are dispositive and preclude
`
`trial on any asserted ground.
`
`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 ‘746 Patent
`
`(IPR2016-01862, IPR2016-01863, and IPR2017-00158), using three (3) 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
`12
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`
`
`
`
`
`
`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.
`
`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 nine (9) grounds of unpatentability against
`13
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`
`
`
`
`overlapping challenged claims in its three (3) related petitions involving the ‘746
`
`Patent. Petitioner’s grounds, filed serially across these three (3) petitions are as
`
`follows:
`
`Proceeding Patent Claims Ground and References
`2016-
`1, 4, 6-8, 10,
`§103 Ard/Schmidt/Webb
`01862
`11, 14, 20, 21,
`§103 Ard/Schmidt/Webb/Araghi
`23, 30, 34, 35
`§103 Ard/Schmidt/Webb/Steinle
`§103 Ard/Schmidt/Webb/Reisch
`§103 Pucci/Kepley/Schmidt
`§103 Pucci/Kepley/Schmidt/Shinosky
`§103 Pucci/Kepley/Schmidt/Wilson
`§103 Ousely/Steger
`§103 Ousely/Steger/Nara
`
`2016-
`01863
`
`2016-
`00158
`
`1, 4, 6-8, 10,
`11, 14, 20, 21,
`23, 30, 34, 35
`1, 4, 6-8, 10,
`11, 14, 20, 21,
`23, 30
`
`
`
`By way of example, Petitioner uses Ard as the primary reference to
`
`challenge the various claims of the ‘746 Patent in the instant Petition. This
`
`analysis is redundant of the other Petitions which utilize Pucci and Ousely 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 ‘746 Patent. Petitioner relies on
`
`multiple references to provide essentially the same teaching to meet the same
`
`
`
`14
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`
`
`
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`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
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`multiple petitions. SAS Inst. Inc. v. Complementsoft, LLC, IPR2013-00581, Paper
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`17 (PTAB Feb. 24, 2014). The Petitioner has an obligation to advance its most
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`salient grounds in one petition or to explain in detail why that cannot be
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`accomplished due to the relative strengths and weaknesses of particular prior art
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`applied to particular claims that need to be addressed in multiple grounds/petitions.
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`Id. Absent such an explanation, the Board should not institute trial because the
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`serial filing of petitions creates undue burden on the Patent Owner and Board and
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`conflicts with the very purpose of IPRs—to secure the “just, speedy, and
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`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b).
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`B.
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`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE
`PETITION’S
`CONCLUSORY
`OBVIOUSNESS
`COMBINATIONS
`
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`35 U.S.C. § 103 states, “[a] patent for a claimed invention may not be
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`
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`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
`15
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`
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`before the effective filing date of the claimed invention to a person having ordinary
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`skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103.
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`
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`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
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`Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (discussing rationale underlying the
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`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 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
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`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
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`obviousness cannot be sustained by mere conclusory statements; instead, there
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`must be some articulated reasoning with some rational underpinning to support the
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`legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`16
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`
`
`
`
`
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`(2007). In this respect, to establish a prima facie case of obviousness, it is
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`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
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`underpinning to support the legal conclusion of 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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`‘746 Patent should or could be combined. Petitioner states, for example, “Ard’s
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`scanner ‘emulates a disk drive’”. . .and “‘provides electronic signals identical to
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`those of a standard disk drive.’” Paper 2 (Petition) at 28. “Accordingly, it would
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`have been obvious to a POSITA that the general purpose computer. . . would
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`receive a SCSI INQUIRY command [disclosed in Schmidt] from the scanner 6
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`indicating it is part of the disk drive class.” Id. This same style of conclusory
`17
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`
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`analysis was used to combine all of the prior art throughout the Petition. Id. at 29,
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`31, 36-38, 40-43, 46, 48, 52 and 64.
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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 try’
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`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 technique
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`to improve similar devices in the same way,” and “such combination would also be
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`tantamount to combining prior art elements according to known methods to yield
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`predictable results.” Id. at 16. Consequently, Petitioner’s similar analysis in the
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`instant Petition does not meet the standards set forth in 35 U.S.C. § 103 and
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`institution should be denied.
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`In a recent decision, the Federal Circuit also identified several insufficient
`18
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`articulations of a motivation to combine references in an obviousness rejection. In
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`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 March
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`
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`19
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`
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`20, 1997. Exhibit 1046 (Ard). The Petition concedes that the “’746 patent claims
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`priority through a series of applications to U.S. Patent No. 6,470,399 which is the
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`national stage of international application PCT/EP98/01187, filed on March 3,
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`1998.” Paper 2 (Petition) at 4-5. “The ’746 patent further claims priority to a
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`German application, filed on March 4, 1997.” Id. The ’746 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 “challenged claims of the ’746
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`patent are not entitled to priority benefit of the German application because
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