`
`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 IPR2017-00156
`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 .................................................. 12
`
`A.
`
`B.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S REDUNDANT GROUNDS ................................. 12
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S CONCLUSORY OBVIOUSNESS
`COMBINATIONS................................................................................... 16
`
`C.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BECAUSE
`OUSLEY IS NOT PRIOR ART ............................................................ 20
`IV. CONCLUSION .............................................................................................. 26
`
`
`
`
`
`i
`
`
`
`
`
`
`Ex. No.
`2001
`2002
`
`
`
`EXHIBIT LIST
`
`Currently Filed – Patent Owner
`
`
`Description
`Declaration of Dr. Kenneth Fernald
`United States Patent No. 6,895,449, issued from August 15, 2002
`U.S. Application No. 10/219,105
`
`Previously Filed – Petitioner
`
`Ex. No.
`1001
`1002
`1003
`
`Description
`U.S. Patent No. 9,189,437 to Tasler
`File History excerpts for U.S. Patent No. 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
`1004
`1005-1006 Intentionally Left Blank
`1007
`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
`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
`
`1008
`1009
`1010
`1011
`1012
`
`1019
`1020
`
`
`
`ii
`
`
`
`1025-1029 Intentionally Left Blank
`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”)
`1032-1057 Intentionally Left Blank
`U.S. Patent No. 7,184,922 to Ousley et al.
`1058
`U.S. Patent No. 4,225,940 to Moriyasu et al.
`1059
`1060
`U.S. Patent No. 3,425,025 to Williams
`1061
`Abandoned U.S. Application No. 11/078,778, filed March 11, 2005
`1062
`Axelson, Jan, “USB Complete – Everything You Need to Develop
`Custom USB Peripherals,” 2nd Edition, Madison, WI: Lakeview
`Research LLC, 2001.
`Universal Serial Bus Specification, Revision 2.0, April 27, 2000.
`Intentionally left blank
`
`1031
`
`1063
`1064
`
`
`
`
`
`
`
`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 14,
`
`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
`
`Board deny institution of a trial with respect to all claims of the ‘437 Patent.
`
`
`
`1
`
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘437 PATENT
`
`
`
`The ’437 Patent involves a unique method for achieving high data transfer
`
`rates for data acquisition systems (e.g., still pictures, videos, voice recordings) to a
`
`general-purpose computer, without requiring a user to purchase, install, and/or run
`
`specialized software for each system. Exhibit 1001 (‘437 Patent) at 3:33-37. At
`
`the time of the invention, there were an increasing number and variety of data
`
`acquisition systems with the ability to capture high volumes of information. Id. at
`
`1:42-60. As such, there was an increasing demand to transfer that information to
`
`commercially-available, general purpose computers. Id. at 1:29-41. But at that
`
`time—and today—performing that data transfer operation required either loading
`
`specialized, sophisticated software onto a general purpose computer, which
`
`increases the risk of error and the level of complexity for the operator, or
`
`specifically matching interface devices for a data acquisition system to a host
`
`system that may maximize data transfer rates but lacks the flexibility to operate
`
`with different devices. Id. at 1:24-3:25.
`
`The ‘437 Patent recognizes that the existing options were wasteful and
`
`inefficient and presents a solution that would achieve high data transfer rates,
`
`without specialized software, while being sufficiently flexible to operate
`
`independent of device or host manufacturers. Id. at 2:20-41 and 3:29-32. The
`
`resulting invention would allow a data acquisition system to identify itself as a type
`
`
`
`2
`
`
`
`of common device so as to leverage the inherent capabilities of general-purpose,
`
`commercially-available computers. Id. at 4:16-30. Accordingly, users could avoid
`
`loading specific software; improve data transfer efficiency; save time, processing
`
`power, and memory space; and avoid the waste associated with purchasing
`
`specialized computers or loading specific software for each device. Id. at 3:29-32,
`
`3:33-46, 7:38-8:4, 8:34-41, 9:23-27 and 11:38-55. The ’437 Patent claims
`
`variations of this concept and provides a crucial, yet seemingly simple, method and
`
`apparatus for a high data rate, device-independent information transfer. Id. at 3:29-
`
`32.
`
`The interface device disclosed in the ‘437 Patent can leverage “drivers for
`
`input/output device[s] customary in a host device which reside in the BIOS system
`
`of the host device . . . .” Id. at 10:25-26; see also id. at 4:23-27 (“The interface
`
`device according to the present invention therefore no longer communicates with
`
`the host device or computer by means of a specially designed driver but the means
`
`of a program which is present in the BIOS system . . .”), 5:17-23 (describing the
`
`use of “usual BIOS routines” to issue INQUIRY instructions to the interface), and
`
`7:57-64 (describing use of BIOS routines). Similarly, the written description
`
`describes also using drivers included in the operating system. Id. at 5:11-14
`
`(“Communication between the host system or host device and the interface device
`
`is based on known standard access commands as supported by all known operating
`
`
`
`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 10:23-29. Accordingly, the ‘437 Patent contemplated a universal
`
`interface device that could operate independent of the manufacturer of the
`
`computer. Id. at 11:38-55. Indeed, the preferred embodiment discloses that the
`
`interface device includes three different connectors, a 50 pin SCSI connector 1240,
`
`a 25 pin D-shell connector 1280, and a 25 pin connector 1282, to allow the ‘437
`
`Patent’s interface device to connect to a variety of different standard interfaces that
`
`could be present in a host computer. Id. at 8:42-59 and FIG. 2.
`
`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
`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 10. 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.
`
`Patent Owner contends that the field of the invention relates to “the transfer of
`
`data and in particular to interface devices for communication between a computer or
`
`host device and a data transmit/receive device from which data is to be acquired or
`
`with which two-way communication is to take place.” Exhibit 1001 (‘437 Patent) at
`
`1:18-22. A POSITA would have at least a bachelor’s degree in a related field such
`
`as computer engineering or electrical engineering and at least three years of
`
`experience in the design, development, and/or testing of hardware and software
`
`
`
`6
`
`
`
`components involved with data transfer or in embedded devices and their interfaces
`
`with host systems. Alternatively, a POSITA may have five or more years of
`
`experience in these technologies, without a bachelor’s degree.
`
`
`
`D. CLAIM CONSTRUCTION
`In an inter partes review (“IPR”), the Board construes claim terms in an
`
`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). The claim
`
`language should be read in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art. Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 136
`
`S. Ct. 2131, 2146 (June 20, 2016). The broadest reasonable meaning given to
`
`claim language must take into account any definitions presented in the
`
`specification. In re 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 11. Patent
`
`
`
`7
`
`
`
`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.” Paper 2 (Petition) at 12. 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. 4,225,940 (“Moriyasu”), with
`
`teachings of the secondary reference, United States Patent No. 7,184,922
`
`(“Ousley”), 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 Ousley which was filed
`
`on February 28, 2005. Exhibit 1058 (Ousley). The ‘437 Patent claims priority to
`
`a German application filed March 4, 1997 which predates Ousley. Ousley
`
`
`
`10
`
`
`
`therefore fails to qualify as prior art under any section of 35 U.S.C. § 102.
`
`Petitioner argues Ousley is an intervening reference because “the challenged
`
`claims recite limitations having no written description in the abandoned
`
`application [U.S. Application No. 11/078,778 from which the ’437 application
`
`claims priority].” Paper 2 (Petition) at 1. Petitioner’s argument however is
`
`meritless because the Petition fails to show the abandoned application lacks
`
`written description for the “without requiring any end user to interact with the
`
`computer to set up a file system in the ADGPD at any time” limitation. Because
`
`the abandoned application provides written description for this limitation (as do
`
`all of the applications listed in the chain of priority of the ‘437 Patent), the ‘437
`
`Patent is entitled to a priority date of March 4, 1997 prior to the date of
`
`application of Ousley. Ousley 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 ground.
`
`
`
`11
`
`
`
`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 (3) 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 five (5) separate IPR petitions related to the ‘437 Patent
`
`(IPR2016-01840,
`
`IPR2016-01841,
`
`IPR2016-01842,
`
`IPR2016-01844
`
`and
`
`IPR2017-00156), using five (5) different primary references. Because no
`
`meaningful distinction between these petitions was made in the instant Petition,
`
`the Board should reject this Petition.
`
`“[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
`
`
`
`12
`
`
`
`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 twenty (20) grounds of unpatentability
`
`against overlapping challenged claims in its five (5) related petitions involving the
`
`‘437 Patent. Petitioner’s grounds, filed serially across these five (5) petitions are
`
`as follows:
`
`
`
`13
`
`
`
`Proceeding Patent Claims Ground and References
`2016-
`1, 4-6, 9-16,
`§103 Kawasaki/Alon/Schmidt
`01840
`18, 30, 34, 43,
`§103 Kawasaki/Alon/Schmidt/Van Sant
`45
`§103 Kawasaki/Alon/Schmidt/Ogami
`§103 Kawasaki/Alon/Schmidt/Sangveraphunsiri
`§103 Murata/Salomon/Schmidt
`§103 Murata/Salomon/Schmidt/Araghi
`§103 Murata/Salomon/Schmidt/Compton
`§103 Murata/Salomon/Schmidt/Reisch
`§103 Pucci/Kepley/Schmidt
`§103 Pucci/Kepley/Schmidt/Shinosky
`§103 Pucci/Kepley/Schmidt/Campbell
`§103 Pucci/Kepley/Schmidt/Wilson
`§103 Pucci/Schmidt
`§103 Pucci/Schmidt/Campbell
`§103 Ard/Salomon/Schmidt
`§103 Ard/Salomon/Schmidt/Araghi
`§103 Ard/Salomon/Schmidt/Compton
`§103 Ard/Salomon/Schmidt/Reisch
`§103 Moriyasu/Ousley
`§103 Moriyasu/Ousley/Williams
`
`1, 4-6, 9-16,
`18, 30, 32, 34,
`43, 45
`
`1, 4-6, 9-16,
`18, 30, 32, 34,
`43, 45
`
`1, 4-6, 9-16,
`18, 30, 32, 34,
`43, 45
`
`1, 4-6, 9-16,
`18, 30, 32, 34
`
`2016-
`01841
`
`2016-
`01842
`
`2016-
`01844
`
`2016-
`00156
`
`
`
`By way of example, Petitioner uses Moriyasu 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, Ard and
`
`Kawasaki as primary references to challenge the same claims. Petitioner only
`
`provides a very brief explanation regarding the redundancy issue at the end of the
`
`Petition. Paper 2 (Petition) at 59. Petitioner merely states:
`
`Petitioner’s proposed grounds against the ‘437 patent
`based on Moriyasu and Ousley are not redundant to
`grounds previously proposed by Apple or other
`Petitioners based on Ard, Pucci, Murata, Kawasaki, and
`Aytac. The proposed grounds are the only ones that
`14
`
`
`
`
`
`challenge the ‘437 patent’s priority benefit to its parent
`U.S. applications. The Ard petition in IPR2016-01844
`challenged the ‘437 patent’s priority benefit to the original
`German
`application, which
`contained
`substantive
`differences relative to the ‘437 specification. That
`petition therefore presented prior art that intervened
`between the German application and the PCT filing. The
`instant Petition challenges the ‘437 patent’s priority
`benefit to U.S. parent applications that share the same
`specification as the ‘437 patent. Ousley is an intervening
`prior-art reference between the first U.S. filing in 1999
`and the numerous continuations that resulted in the 2006
`filing of the application from which the ‘437 patent
`originated.
`
`Id. This entire redundancy reasoning is directed to the wrong factors. 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). Whether the applied
`
`references qualify unequivocally as prior art or not is irrelevant to the redundancy
`
`inquiry. Because 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, this Petition should be denied.
`
`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,
`
`
`
`15
`
`
`
`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.
`
`
`
`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
`
`
`
`16
`
`
`
`invention where there is some teaching, suggestion, or motivation to do so. In re
`
`Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (discussing rationale underlying the
`
`motivation-suggestion-teaching test as a guard against using hindsight in an
`
`obviousness analysis). More specifically, in accordance with MPEP 2143.01(IV),
`
`a statement that modification of the prior art to meet the claimed invention would
`
`have been well within the ordinary skill of the art at the time the claimed
`
`invention was made because the references relied upon teach that all aspects of
`
`the claimed invention were individually known in the art is not sufficient to
`
`establish a prima facie case of obviousness without some objective reason to
`
`combine the teachings 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.
`
`
`
`17
`
`
`
`
`
`The Board has previously denied petitions on obviousness grounds because
`
`the Petitioner failed to explain how references may be combined and why the
`
`combination accounts for all features of the claims. Dell, Inc. v. Elecs. &
`
`Telecommc’ns Res. Inst., IPR2014-00152, Paper 12 at 26-28 (PTAB May 16,
`
`2014); see also Dominion Dealer Sols., LLC v. Autoalert, Inc., IPR2013-00223,
`
`Paper 9 at 19 (PTAB Aug. 15, 2013).
`
`Here, Petitioner makes very little effort to explain why the various
`
`references that allegedly disclose all of the limitations of the claims of the ‘437
`
`Patent should or could be combined. In discussing the “file of digitized analog
`
`data” limitation of the challenged independent claim, Petitioner states, for
`
`example, a “POSITA would have found it obvious to modify Moriyasu according
`
`to Ousley to store the digitized waveform as a file on memory 82, thereby
`
`allowing a computer ‘to obtain the [digital waveform file] in the same standard
`
`manner in which it would obtain files stored on any other USB Mass Storage
`
`device.’” Paper 2 (Petition) at 24-25. Petitioner’s expert adds nothing to this
`
`analysis and merely parrots back the same unsupported positions from the
`
`Petition. Exhibit 1003 (Zadok Declaration) at ¶ 81-82. Petitioner concludes the
`
`combination discloses the “the processed and digitized analog data is stored in the
`
`data storage memory as at least one file of digitized analog data” even though
`
`Petitioner admits neither Moriyasu nor Ousley teaches it.
`
`
`
`18
`
`
`
`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,
`
`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:
`
`
`
`19
`
`
`
`insufficient
`some
`identified
`We have, however,
`articulations of motivation
`to combine.
` First,
`“conclusory statements” alone are insufficient and,
`instead, the finding
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
