UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-00224
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-00224
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-00224
`U.S. Patent 8,724,622
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`I.
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`INTRODUCTION
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`Tables of Contents
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`II.
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`BACKGROUND OF THE '622 PATENT
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`Priority of the '622 Patent through its Patent Family
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`Overview of the '622 Patent
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`III. CUMULATIVE AND REDUNDANT CHALLENGES
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` Dahod is Cumulative Under 35 U.S.C. § 325(d)
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`The Redundant Challenges Are Not Entitled to Consideration
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`The Two Petitions Are Horizontally Redundant
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`1.
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`2.
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`The Petition Contains Many Vertically Redundant Theories 18
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`1
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`3
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`3
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`4
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`8
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`8
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`13
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`14
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`21
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`22
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`26
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`Petitioner’s Abusive Pattern of Redundancy is Improper
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`IV. CLAIM CONSTRUCTION
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`V. CONCLUSION
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`ii
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`IPR2017-00224
`U.S. Patent 8,724,622
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`I.
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`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
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`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
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`Partes Review (“the Petition” or “the '224 Petition”) of U.S. Patent No. 8,724,622
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`(“the '622 Patent”) filed by Apple, Inc. (“Petitioner”). The Board should deny the
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`Petition in its entirety because of procedural and substantive defects.
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`Petitioner follows the same impermissible strategy in challenging the '622
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`Patent that it uses in each one of the six concurrently-filed petitions (IPR2017-00220
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`through IPR2017-00225), which collectively challenge a total of sixty-five (65)
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`claims of four related patents. Petitioner consistently presents at least a pair of
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`redundant obviousness theories for every challenged claim. As an apparent
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`afterthought, Petitioner then offers an illusory justification that is applicable, if at
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`all, to only a mere fraction of those redundant challenges.
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`The Board has long held that redundant grounds are not entitled to
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`consideration unless the petitioner provides a sufficient bi-directional explanation of
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`the relative strengths and weaknesses of each redundancy. The present '224 Petition
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`relies on Dahod (Ex. 1009), while the co-pending '223 Petition1 challenging the same
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`claims relies, instead, on Vuori (Ex. 1005). While Petitioner identifies certain
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`1 Apple Inc. v. Uniloc Luxembourg S.A., No. IPR2017-00223, Petition for Inter
`Partes Review (P.T.A.B. Nov. 14, 2016), Paper No. 2 (“the '223 Petition”).
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`1
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`substantive strengths of Dahod over Vouri, Petitioner fails to articulate any relative
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`weakness of Dahod based on their respective disclosures. Consequently, the
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`co-pending '223 Petition (primarily based on Vuori) should be rejected as
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`impermissibly redundant.
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`Once the Board resolves the acknowledged redundancy issue, the Board
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`should then exercise its discretion under 35 U.S.C. § 325(d) to reject the present '224
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`Petition (based on Dahod) as failing to present any new, non-cumulative evidence
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`over what was already considered by the Examiner during prosecution. Petitioner
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`does even not attempt to defend against application of § 325(d). Rather, Petitioner
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`admittedly asks the Board to second-guess the Examiner’s findings on the alleged
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`basis that “the Examiner apparently did not understand” the Dahod reference, though
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`the Examiner admittedly had primarily considered and relied upon that reference
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`throughout prosecution. The present facts clearly invoke § 325(d). See Baker Hughes
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`Oilfield Operations, Inc. v. Smith International, Inc., No. IPR2016-01450 (P.T.A.B.
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`Dec. 22, 2016), Paper 10 at 10-11 (finding the reliance on references previously
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`presented to the Office was not entitled to consideration due to “the failure of
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`Petitioner to address the impact of § 325(d)”).
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`Because of the fully dispositive procedural issues, the Board need not and
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`should not reach the substantive merits of either the '223 or '224 Petitions.
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`Nevertheless, Patent Owner identifies below example substantive deficiencies to
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`2
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`IPR2017-00224
`U.S. Patent 8,724,622
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`further illustrate the futility of the present '224 Petition. 2
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`II. BACKGROUND OF THE '622 PATENT
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`Priority of the '622 Patent through its Patent Family
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`The '622 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” Ex. 1001. The '622 Patent issued from U.S. Patent Application No.
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`13/546,673, which is a continuation of U.S. Patent No. 8,243,723, which is a
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`continuation of U.S. Patent No. 7,535,890, filed on Dec. 18, 2003. The '622 Patent
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`issued on May 13, 2014.
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`Below is a picture of the family tree for the four patents Petitioner challenges
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`in a series of six consecutively filed petitions (IPR2017-00220
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`through
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`IPR2017-00225).
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`2 Should the Board institute proceedings in this matter, Patent Owner does not
`concede the legitimacy of any arguments in the Petition that are not specifically
`addressed herein. Patent Owner expressly reserves the right to rebut any such
`arguments in its Patent Owner Response.
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`3
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
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`Challenged by Petitioner in
`IPR2017-00220 and IPR2017-00221
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`IPR2017-00222
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`IPR2017-00223 &
`IPR2017-00224
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`IPR2017-00225
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` Overview of the '622 Patent
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`The
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`'622 Patent
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`recognized
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`that
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`conventional
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`circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited developing other forms of communication over such
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`networks. According
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`to
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`the
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`'622 Patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the telephone
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`4
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`IPR2017-00224
`U.S. Patent 8,724,622
`terminal to another device 20 over the [public switched telephone network or] PSTN,
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`including another
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`telephone
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`terminal. During
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`the
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`telephone call, voice
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`communication takes place over that communication path.” Ex. 1001, 1:29-34.
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`The '622 Patent expressly distinguishes circuit-switched networks from
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`packet-switched networks (e.g., the Internet) at least in that the latter routes
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`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
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`also known as IP telephony or Internet telephony.”3 Id., 1:35-36. Because legacy
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`circuit-switched devices were unable to communicate directly over packet-switched
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`networks, media gateways (114) were designed to receive circuit-switched signals
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`and packetize them for transmittal over packet-switched networks, and vice versa.
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`Id., 2:8-18. The conversion effected by media gateways (e.g., 114 and 118)
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`highlights the fact that packetized data carried over packet-switched networks (e.g.,
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`3 Consistent with the '622 Patent specification, the USPTO has also recognized there
`are significant differences between circuit-switched and packet-switched networks
`during the relevant timeframe. See, e.g., U.S. Application No. 90/012,728 and
`90/012,789 (Notice of Intent to Issue Ex Parte Reexamination Certificate, dated
`April 10, 2014) at page 9, where the USPTO confirmed the following:
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`Ethernet packet switching protocol, including TCP/IP, are very specific
`connectionless/packet switched protocols. In contrast to connection-
`oriented protocols, connectionless/packet switched protocols do not
`need to set up a dedicated path in advance. Rather, routers send
`fragmented messages or “packets” to their destination independently.
`Connectionless protocols have a number of advantages over
`connection-oriented protocols, including better use of available
`bandwidth.
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`5
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`IP network 102) are different from, and are incompatible with, an audio signal
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`carried over a dedicated packet-switched circuit. Id., 2:8-21.
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`The '622 Patent further recognized that, notwithstanding the advent of instant
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`text messages, at the time of the claimed invention there was no similarly convenient
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`analog to leaving an instant voice message over a packet-switched network. Id.,
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`2:22-53. Rather, “conventionally, leaving a voice message involves dialing the
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`recipient’s telephone number (often without knowing whether the recipient will
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`answer), waiting for the connection to be established, speaking to an operator or
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`navigating through a menu of options, listening to a greeting message, and recording
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`the message for later pickup by the recipient. In that message, the user must typically
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`identify himself or herself in order for the recipient to return the call.” Id., 2:26-33.
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`The inventor observed, therefore, that “notwithstanding the foregoing
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`advances in the VoIP/PSTN voice communication and voice/text messaging, there
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`is still a need in the art for providing a system and method for providing instant VoIP
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`messaging over an IP network.” Id., 2:47-51. In certain disclosed embodiments the
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`'622 Patent addressed that need, in part, by providing a user-accessible client (208)
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`that is specially configured for instant voice message (IVM) and for direct
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`communication over a packet-switched network (e.g., through an Ethernet card). Id.,
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`12:13-14. More specifically, the '622 Patent teaches that certain clients (208) are
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`specially configured to “listen[] to the input audio device 212,” “record[] the user’s
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`6
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`IPR2017-00224
`U.S. Patent 8,724,622
`speech into a digitized audio file 210 (i.e., instant voice message) stored on the IVM
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`client 208,” and “transmit[] the digitized audio file 210” as packetized data (e.g.,
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`using TCP/IP) over a packet-switched network (e.g., network 204) “to the local IVM
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`server 202.” Id., 8:8-11 and 8:21-22.
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`The Petition challenges two independent (Claims 3 and 38) and seventeen
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`dependent claims (Claims 4, 6-8, 10-19, and 21-23). For the convenience of the
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`Board, independent Claim 3 is reproduced below:
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`
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`3. A system comprising:
`a network interface connected to a packet-switched
`network;
`a messaging system communicating with a plurality of
`instant voice message client systems via the network
`interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a
`current connection to each of the plurality of instant
`voice message client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice
`message client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
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`7
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`IPR2017-00224
`U.S. Patent 8,724,622
`III. CUMULATIVE AND REDUNDANT CHALLENGES
`As shown in the table below, Petitioner has filed two inter partes review
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`petitions that collectively challenge the patentability of the same claims of the '622
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`Patent under 35 U.S.C. § 103(a) over the following redundant and cumulative
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`grounds:
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`Petition
`IPR2017-00223
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`Ground
`1
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`IPR2017-00223
`IPR2017-00223
`IPR2017-00224
`IPR2017-00224
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`IPR2017-00224
`IPR2017-00224
`
`2
`3
`4
`5
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`6
`7
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`
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`Claims
`3, 4, 6-8, 11-13,
`18, and 21-23
`10 and 14-17
`19
`38
`3, 4, 7-8, 11-13,
`18, 21-23, and 38
`6, 10, and 14-17
`19
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`Reference(s)
`Vuori4 and SMSS5
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`Vuori, SMSS, and Holtzberg6
`Vuori, SMSS, and Väänänen7
`Vuori
`Dahod8
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`Dahod and Hogan9
`Dahod and Logan10
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` Dahod is Cumulative Under 35 U.S.C. § 325(d)
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`The Petition should be denied under 35 U.S.C. § 325(d) because it does not
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`present any new, non-cumulative evidence over what was already considered by the
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`Examiner during prosecution. Section 325(d) grants the Board discretion to reject a
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`petition for inter partes review if the “same or substantially the same prior art or
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`4 Ex. 1005, U.S. Patent Application Publication No. 2002/0146097 (“Vuori”).
`5 Ex. 1006, SMS Specification (“SMSS”).
`6 Ex. 1007, U.S. Patent No. 6,625,261 (“Holtzberg”).
`7 Ex. 1008, U.S. Patent No. 7,218,919 (“Väänänen”).
`8 Ex. 1009, U.S. Patent Application Publication No. 2004/0022208 (“Dahod”).
`9 Ex. 1010, U.S. Patent No. 5,619,554 (“Hogan”).
`10 Ex. 1011, U.S. Patent No. 5,732,216 (“Logan”).
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`8
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`IPR2017-00224
`U.S. Patent 8,724,622
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board
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`has found that a petition is properly denied if it fails to identify any new evidence
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`establishing a reasonable likelihood that the petitioner will prevail on at least one
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`claim. See e.g., Excelsior Medical Corp. v. Lake, IPR2013-00494 (P.T.A.B. Feb. 6,
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`2014), Paper 10, at 20.
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`The facts here present a textbook-worthy scenario for applying the discretion
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`set forth in § 325(d). It is quite telling that Petitioner evidently was aware its reliance
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`on Dahod particularly risked invoking § 325(d),11 yet Petitioner made no effort to
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`explain why the Board should not exercise its discretion afforded under that statute.
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`Petitioner must have realized such an argument would have been futile under the
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`present facts (and yet chose to file the cumulative and redundant Petition anyway).
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`Petitioner’s failure to squarely address the implicitly acknowledged § 325(d) issue
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`is itself fatal to the Petition. See Baker, No. IPR2016-01450, Paper 10 at 10-11
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`(finding the reliance on references previously presented to the Office was not
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`entitled to consideration due to “the failure of Petitioner to address the impact of §
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`325(d)”).
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`Petitioner overtly asks the Board to second-guess the Examiner by instituting
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`trial on the basis that Dahod renders the challenged claims obvious, notwithstanding
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`11 See Pet. at 4 (apparently attempting, incorrectly, to distinguish Vuori from Dahod
`because the former allegedly “is not susceptible to a potential §325(d) attack.”)
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`9
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`the Examiner’s explicit findings to the contrary. Pet. 1. During prosecution of the
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`application that issued as the '622 Patent, the Examiner initially issued a non-final
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`rejection under 35 U.S.C. § 102(e) over U.S. Patent No. 7,372,826 issued to Dahod
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`et al.—i.e., the patent that issued from U.S. Patent Application Publication No.
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`2004/0022208, which the Petition cites to as Dahod (Ex. 1009). Ex. 1002 (Patent
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`File History), at 139.12
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`New claims were then submitted and the Examiner issued a final rejection,
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`on November 29, 2013, again asserting Dahod against certain claims as either an
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`anticipatory reference or as the primary reference of an obviousness combination,
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`while finding that the remainder of the claims “would be allowable if rewritten in
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`independent form including all of the limitations of the base claim and any
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`intervening claims.” Id. at 97-100. The claims were again amended; and the
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`Examiner ultimately issued a notice of allowance on March 6, 2014. Id. at 36-42.
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`For the convenience of the Board, the Examiner’s “Reasons for Allowance”
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`are copied in their entirety below:
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`The prior art fails to disclose applicant’s instant voice
`messaging system that has a database of user records
`where each record includes a user’s name, password and a
`list of other users selected by a user. Neither does the prior
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`12 It is unclear why Petitioner opted to cite to the application publication for Dahod,
`as opposed to the issued patent cited by the Examiner during prosecution of the '622
`Patent. Petitioner’s decision unnecessarily obscures the record (which perhaps was
`the intent) because the Examiner cites to the patent and its double-column format,
`while Petitioner cites, instead, to paragraph numbers of the application publication.
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`10
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`art teach applicant’s instant voice messaging system that
`has an object field including a digitized audio file, nor does
`the instant voice messaging system include displaying a
`list of recipients for an instant voice message. No obvious
`combination of references found would have taught one
`of ordinary skill in the art to make applicant’s system as
`claimed.
`Id. at 41 (emphasis added). Notably, the Petition offers only a partial quotation of
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`the “Reasons for Allowance” that omits significant portions, including the
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`Examiner’s explicit finding of nonobviousness. Pet. 1.
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`Petitioner relies exclusively on Dahod—the primary reference the Examiner
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`scrutinized throughout prosecution—in challenging independent Claims 3 and 38
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`(the only independent claims challenged in the Petition). In doing so, Petitioner does
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`not allege its citations to Dahod raise new evidence that the Examiner failed to
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`consider. On the contrary, Petitioner disparagingly speculates that “[t]he Examiner
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`apparently did not understand” that Dahod rendered certain claim language
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`obvious. Pet. 1 (emphasis added); cf. Ex. 1002 (Patent File History), at 139 (“No
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`obvious combination of references found would have taught one of ordinary skill in
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`the art to make applicant’s system as claimed.”)
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`The Petition also does not allege that the declaration attached thereto presents
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`new evidence. Petitioner could not so allege because the declaration merely copies
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`conclusory statements from the Petition and does not even purport to provide any
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`new, non-cumulative evidence beyond what was already considered by the USPTO.
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`11
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`IPR2017-00224
`U.S. Patent 8,724,622
`Compare, for example, Pet. 31-42 with Ex. 1003 (Forys Dec.), at ¶415-18. Such a
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`vacuous declaration does not save the Petition. In Kinetic Technologies, Inc. v.
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`Skyworks Solutions, Inc., IPR2014-00529 (P.T.A.B. Sept. 23, 2014), Paper 8
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`(denying the petition because the expert’s conclusory opinion was substantially
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`identical to the arguments of the petition and did not provide any facts or data to
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`support the underlying opinion).
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`
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`While it is undisputed that the Examiner considered the entire Dahod
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`reference and that the Petition and its attached declaration present no new evidence,
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`Petitioner brazenly asks the Board to second-guess the Examiner’s explicit findings
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`including, for example, that Dahod does not anticipate or render obvious “an instant
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`voice message [that] includes an object field including a digitized audio file” (as
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`recited in independent Claim 3), or displaying the recipient list (as recited in
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`independent Claim 38).
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`Essentially, Petitioner hopes the Board will completely ignore § 325(d)
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`simply because Petitioners chose to do so. It is significant—and indeed outcome
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`determinative—that Petitioner makes no attempt to argue against application of the
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`discretion afforded in § 325(d) and, instead, at least tacitly acknowledges that the
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`present challenges based on Dahod invoke the statute. See Baker, No. IPR2016-
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`12
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`01450, Paper 10 at 10-11. Petitioner’s failure to argue against application of § 325(d)
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`prevents the Board from adopting any such argument on Petitioner’s behalf.13
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`For the foregoing reasons, the Board should exercise its discretion under 35
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`U.S.C. § 325(d) to reject the Petition in its entirety.
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`
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`The Redundant Challenges Are Not Entitled to Consideration
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`The Petition not only suffers from acknowledged § 325(d) issues, it also
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`impermissibly presents vertically redundant challenges and, in view of a co-pending
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`and concurrently filed inter partes review petition against the same claims of the
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`same patent,14 it further presents horizontal redundancies. The Board need not and
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`should not consider those unjustified redundancies.
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`The Board has long held that multiple grounds for unpatentability for the
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`same claim will not be considered unless the petition itself explains the relative
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`strengths and weaknesses of each ground. See Liberty Mut. Ins. Co. v. Progressive
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`Cas. Ins. Co., No. CBM2012-00003 (P.T.A.B. Oct. 25, 2012), Paper No. 7. This bi-
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`directional explanation of relative strengths and weaknesses of each redundancy is
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`required because “numerous redundant grounds would place a significant burden on
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`13 In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[W]e
`find no support for the PTO's position that the Board is free to adopt arguments on
`behalf of petitioners that could have been, but were not, raised by the petitioner
`during an IPR. Instead, the Board must base its decision on arguments that were
`advanced by a party, and to which the opposing party was given a chance to
`respond.”).
`14 See note 1, supra.
`
`13
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`the Patent Owner and the Board, and would cause unnecessary delays,” contrary to
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`37 C.F.R. §42.1(b), which calls for the “just, speedy, and inexpensive resolution of
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`every proceeding.” Id.
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`1.
`The Two Petitions Are Horizontally Redundant
`Petitioner chose to file two consecutive inter partes review petitions
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`(IPR2017-0022315 and IPR2017-00224) which challenge the same claims of the
`
`same '622 Patent under redundant theories of obviousness. Even the accompanying
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`exhibits of both petitions are identical. The redundant petitions only differ in that
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`the present '224 Petition relies on Dahod (Ex. 1009), while the redundant '224
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`Petition relies, instead, primarily on Vuori (Ex. 1005). Such redundancy is
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`impermissible because Petitioner fails to explain “why each ground has strength and
`
`weakness relative to the other should both grounds be asserted for consideration.”
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`Liberty Mutual, CBM2012-00003, Paper 7 at 3 (emphasis original).
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`Petitioner impermissibly seeks what the Board refers to as horizontal
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`redundancy. Horizontal redundancy occurs when multiple references are relied upon
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`to “provide essentially the same teaching to meet the same claim limitation, and the
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`associated arguments do not explain why one reference more closely satisfies the
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`claim limitation at issue in some respects than another reference, and vice versa.”
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`Liberty Mut., CBM2012-00003, Paper 7 at 3 (emphasis original).
`
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`15 See note 1, supra.
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`14
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`IPR2017-00224
`U.S. Patent 8,724,622
`The Board’s unwillingness to consider references presented in a horizontally
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`redundant manner demonstrates its aversion to art that is cumulative of other art
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`presented to it, where the multiple references are essentially interchangeable and
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`used to allegedly disclose the same claim features.
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`The Board recently exercised this discretion to deny redundancy appearing
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`within separate petitions in the “informative” decision Medtronic, Inc. v. NuVasive,
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`Inc., No. IPR2014-00487 (Sept. 11, 2014), Paper No. 8. The petitioner there had
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`previously filed two IPR petitions challenging the same patent. The Board denied
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`one petition and instituted the other. The Board denied a third petition challenging
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`the same patent as “essentially a duplicate” of the denied petition, despite the fact
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`the petitioner had argued the third petition corrected deficiencies, provided new
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`evidence and arguments, and presented grounds that were not redundant to the
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`grounds presented in the instituted petition.
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`It is Petitioner’s obligation to explain why the Board should institute trial on
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`multiple redundant grounds. Liberty Mut., CBM2012-00003, Paper 7 at 3. As
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`discussed herein, not only has Petitioner not met that obligation, it has not even
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`attempted to provide explanations which would justify dedication of the Board’s
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`resources toward analyzing references in a cumulative and redundant manner.
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`The Petition articulates only one relative distinction between Dahod and
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`Vuori. Specifically, Petitioner concedes “Dahod better teaches the ‘object field
`
`15
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`IPR2017-00224
`U.S. Patent 8,724,622
`including a digitized audio file’ recited in independent claim 3.” Pet. 4. As
`
`independent Claim 38 does not recite that same limitation, Petitioner’s only alleged
`
`justification for redundancy is entirely irrelevant to that claim. See Mobotix Corp.
`
`v. E-Watch, Inc., No. IPR2013-00335 (P.T.A.B. Jan. 10, 2014), Paper 20 at 2-3
`
`(finding redundant challenges are not entitled to consideration where petitioner
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`alleges distinctions that are inapplicable to those claims).
`
`Petitioner also fails to explain how Dahod is substantively weaker than Vuori
`
`in other respects, as is required to justify the redundancy. While Petitioner states
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`“Vouri was not cited in an office action against the '622 Patent during prosecution
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`and is not susceptible to a potential §325(d) attack,” that conclusory statement is
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`merely a legal conclusion concerning a procedural issue, as opposed to a relative
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`strength or weakness of the substantive disclosure within Vuori relative to Dahod.
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`If redundancies could be justified by unilateral and undefended declarations
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`concerning procedural issues, the exception would swallow the rule.
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`Moreover, Petitioner’s legal conclusion concerning Vuori is in error. Section
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`352(d) grants the Board discretion to reject a petition for inter partes review if the
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`“same or substantially the same prior art or arguments previously were presented
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`to the Office.” 35 U.S.C. § 325(d) (emphasis added). Petitioner’s reliance on Vuori
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`to present the same or substantially the same arguments invokes the discretion
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`offered under § 325(d), regardless whether Vuori was previously presented to the
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`16
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`Office during prosecution. Thus, Vouri and Dahod are both subject to § 325(d)
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`scrutiny; and Petitioner’s false declaration otherwise does nothing to justify its
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`admitted horizontal redundancy.
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`It is significant that Petitioner ignores § 325(d) altogether and makes no
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`attempt to explain why its cumulative reliance on Dahod does not invoke that statute.
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`See Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc., No.
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`IPR2016-01450 (P.T.A.B. Dec. 22, 2016), Paper 10 at 10-11 (finding the reliance
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`on references previously presented to the Office was not entitled to consideration
`
`due to “the failure of Petitioner to address the impact of § 325(d)”).
`
`Perhaps a subtler problem with Petitioner’s illusory attempt to show relative
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`strengths and weaknesses for Dahod and Vuori is what Petitioner omitted. While
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`Petitioner has the burden to offer the bi-directional explanation, Petitioner does not
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`explain whether and how its own self-serving legal conclusion with respect to Vuori
`
`alone somehow makes Dahod a stronger or weaker reference. If Petitioner
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`understood that Dahod invoked § 325(d), it should have expressly conceded that
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`weakness and explained why Vuori is not subject to the same (and why Petitioner
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`nevertheless filed the present Petition based on Dahod in the first place). Explicit
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`and bi-directional admissions of relative strengths and weakness is precisely the
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`quid pro quo the Board requires to justify redundancy.
`
`17
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`Petitioner then should have provided legal authority (and there is none)
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`confirming that a party’s unilateral legal conclusion on a procedural issue (as
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`opposed to a substantive distinction concerning what the redundantly asserted
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`references actually disclose) somehow justifies admitted horizontal redundancies of
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`co-pending petitions. Petitioner failed to provide the requisite analysis; and the
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`Board cannot adopt arguments that Petitioner failed to raise.16
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`For the forgoing reasons, Petitioner’s horizontally redundant challenges are
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`not entitled to consideration. Given that Petitioner only offers one substantive
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`distinction which identifies Dahod as the stronger reference, the Board should deny
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`the co-pending '223 Petition in its entirety as horizontally redundant.
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`2.
`The Petition Contains Many Vertically Redundant Theories
`Petitioner compounds its error by presenting internal vertical redundancies
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`within each petition. Vertical redundancy “involves a plurality of prior art applied
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`both in partial combination and in full combination. In the former case, fewer
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`references than the entire combination are sufficient to render a claim obvious, and
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`in the latter case the entire combination is relied on to render the same claim
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`obvious.” Liberty Mut., CBM2012-00003, Paper 7 at 3. In such instances where a
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`larger group of relied upon references and a subset thereof are both alleged to be
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`sufficient to render a claim obvious, “[t]here must be an explanation of why the
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`16 See note 13, supra, citing In re Magnum Oil Tools Int'l, 829 F.3d at 1381.
`
`18
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`reliance in part may be the stronger assertion as applied in certain instances and why
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`the reliance in whole may also be the stronger assertion in other instances.” Id.
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`(emphasis in original).
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`Petitioner repeatedly attempts to argue in the alternative that “[t]o the extent
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`Patent Owner argues that Dahod does not expressly teach or suggest this limitation,
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`it is taught or suggested by Hogan.” Pet. 34, 37, 39, 41, and 46. In certain instances,
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`Petitioner offers no argument based on Dahod alone, yet at least implicitly purports
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`to preserve one.17 See, e.g., id., 34 and 39. And in every instance, Petitioner fails to
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`justify its vertically redundant theories or even acknowledge the redundancy.
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`If one of the alternative grounds is better from all perspectives, then the Board
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`should only consider the stronger ground and not burden the Patent Owner and the
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`Board with the weaker ground. Further, if there is no difference in the grounds, the
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`Petitioner should only assert one of the grounds. Id. at 12. “Only if the Petitioner
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`reasonably articulates why each ground has strength and weakness relative to the
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`other should both grounds be asserted for consideration.” Id.
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`Petitioner makes no effort to explain why “the reliance in part [on Dahod
`
`alone] may be the stronger assertion as applied in certain instances and why the
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`reliance in whole [e.g., Dahod as modified by Hogan] may also be the stronger
`
`
`17 Petitioner cannot pass the burden to Patent Owner to disprove a theory of
`obviousness that is not articulated in the Petition itself.
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`19
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`assertion in other instances.” Id. Rather, in each instance of vertical redundancy,
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`Petitioner simply suggests that if the Board does not buy Petitioner’s admittedly
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`tenuous challenge with respect to Vuori, then a secondary reference provides a
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`backup argument (albeit one that is vertically redundant and also without merit).
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`The Board in Eizo Corp. v. Barco N.V.18 flatly rejected a similar attempt to
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`hedge bets and unnecessarily multiply the work of both the Board and the Patent
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`Owner. The Board there found insufficient the petitioner’s “conclusory assertion”
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`that “[t]o the extent [the first prior art reference] may not explicitly teach” the
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`limitation, the second prior art reference “explicitly teaches this limitation.” The
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`Board explained that “such an assertion fails to resolve the exact differences sought
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`to be derived from” the second prior art reference. Id. (finding that petitioner had not
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`shown a reasonable likelihood of prevailing on that ground).
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`Of course, the Board need not consider any of the Petitioner’s vertically
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`redundant arguments should the Board reject the Petition outright under 35 U.S.C.
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`§ 325(d), for the reasons explained above.
`
`
`18 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
`
`20
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`
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`IPR2017-00224
`U.S. Patent 8,724,622
`Petitioner’s Abusive Pattern of Redundancy is Improper
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`
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`Petitioner has exhibited an abusive pattern of redundancy in each of the six
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`petitions it filed the same week against the same family of patents.19 Considering
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`those six petitions on their face, Petitioner admittedly offers multiple horizontally
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`redundant grounds against every challenged claim (65 challenged claims in total).
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`That redundancy is further compounded by rampant vertically redundant arguments
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`contained within each petition (which may not be apparent on the face of the
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`petitions). Yet in every instance Petitioner offers only an illusory explanation for
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`only some of the horizontally redundant challenges; and Petitioner makes n
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