UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HUAWEI DEVICE CO., LTD., LG ELECTRONICS, INC., AND ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00443
`United States Patent No. 6,470,399
`_______________
`___________________________________
`
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S
`PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107
`___________________________________
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HUAWEI DEVICE CO., LTD., LG ELECTRONICS, INC., AND ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00443
`United States Patent No. 6,470,399
`_______________
`___________________________________
`
`PATENT OWNER PAPST LICENSING GMBH & CO., KG’S
`PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107
`___________________________________
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
` I. STATEMENT OF MATERIAL FACTS IN DISPUTE ................................. 1
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`STATEMENT OF RELIEF REQUESTED ........................................ 2
`
`OVERVIEW OF THE ‘399 PATENT ................................................ 2
`
`LEVEL OF ORDINARY SKILL IN THE ART ................................. 6
`
`CLAIM CONSTRUCTION ................................................................ 7
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS .................. 10
`
`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 THE
`PETITION’S GROUNDS OF REJECTION DO NOT DISCLOSE
`THE “DATA TRANSMIT/RECEIVE DEVICE” LIMITATION OF
`INDEPENDENT CLAIMS 1, 11 AND 14 ........................................... 20
`IV. CONCLUSION ............................................................................................. 22
`
`
`
`
`
`ii
`
`
`
`EXHIBIT LIST
`
`Currently Filed – Patent Owner
`
`
`Description
`Defendants’ Responsive Claim Construction Brief in Papst Licensing
`GmbH & Co., KG v. Apple, Inc. (6:15-CV-01095-RWS)
`In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d
`1255 (Fed. Cir. 2015)
`Definition of charge-coupled device, Dictionary of Engineering
`(2015)
`Markman Order in Papst Licensing GmbH & Co., KG v. Apple Inc.
`(6:15-CV-01095-RWS)
`
`
`Previously Filed – Petitioners
`
`Description
`U.S. Patent No. 6,470,399 to Tasler
`File History for U.S. Patent No. 6,470,399
`Declaration of Kevin C. Almeroth
`Curriculum Vitae of Kevin C. Almeroth
`U.S. Patent No. 5,508,821 to Murata
`Friedhelm Schmidt, The SCSI Bus and IDE Interface (1995)
`The Microsoft Press Computer Dictionary (2nd ed. 1994)
`U.S. Patent No. 6,522,432 to Lin
`Papst’s Opening Claim Constr. Brief and Appendix 8 of Papst’s
`Opening Claim Constr. Brief, Papst Licensing GmbH & Co., KG v.
`Apple, Inc., et al., No. 6:15-cv-01095-RWS (E.D. Tex. Nov. 22,
`2016)
`Papst’s Opening Claim Constr. Brief and Decl. of Robert Zeidman, In
`Re Papst Licensing Dig. Camera Pat. Litig., MDL No. 1880, 1:07-
`mc-00493, (D.D.C. June 3, 2016)
`Am. Nat’l Standards Inst., Inc., Am. Nat’l Standard for Info. Sys’s
`Small Computer System Interface-2, ANSI X3.131-1994 (1994)
`(“SCSI Specification”)
`In re Papst Licensing Dig. Camera Pat. Litig., 778 F.3d 1255, 1265
`iii
`
`
`
`
`Ex. No.
`2001
`
`2002
`
`2003
`
`2004
`
`
`
`
`Ex. No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`
`1012
`
`
`
`
`
`1013
`1014
`1015
`1016
`1017
`
`1018
`1019
`1020
`1021
`1022
`
`1023
`
`(Fed. Cir. 2015)
`The Microsoft Press Computer Dictionary (2nd ed. 1994)
`U.S. Patent No. 5,850,484 to Berretta et al.
`Intentionally Left Blank
`File History for U.S. Patent Application No. 08/411,369
`Comparison of excerpts of File History for U.S. Patent Application
`No. 08/411,369 (Exhibit 1016) and U.S. Patent No. 5,850,484 to
`Beretta et al. (Ex. 1014)
`U.S. Patent No. 4,589,063 to Shah et al.
`U.S. Patent No. 5,038,320 to Heath et al.
`U.S. Patent No. 5,787,246 to Lichtman et al.
`Intentionally Left Blank
`Papst’s Brief, In re Papst Licensing Dig. Camera Pat. Litig., No
`2014-1110 (Fed. Cir. February 20, 2014)
`Rufus P. Turner et al., The Illustrated Dictionary of Electronics
`(1991)
`
`
`
`iv
`
`
`
`I.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioners Huawei Device Co., Ltd, LG Electronics, Inc., and ZTE (USA)
`
`Inc. (“Petitioners”) did not submit a statement of material facts in their 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 April 4, 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 Petitioners have failed to establish that there is a
`
`reasonable
`
`likelihood
`
`that
`
`they will prevail on
`
`their propositions of
`
`unpatentability.
`
`
`
`1
`
`
`
`
`
`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 United States Patent
`
`No. 6,470,399 (“‘399 Patent”).
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘399 PATENT
`The ’399 Patent involves a unique method for achieving high data transfer
`
`rates for data acquisition systems (e.g., still pictures, videos, voice recordings) to a
`
`general-purpose computer, without requiring a user to purchase, install, and/or run
`
`specialized software for each system. Exhibit 1001 (’399 Patent) at 4:23-27. At
`
`the time of the invention, there were an increasing number and variety of data
`
`acquisition systems with the ability to capture high volumes of information. Id. at
`
`1:34-52. As such, there was an increasing demand to transfer that information to
`
`commercially-available, general purpose computers. Id. at 1:20-32. But at that
`
`time—and today—performing that data transfer operation required either loading
`
`specialized, sophisticated software onto a general purpose computer, which
`
`increases the risk of error and the level of complexity for the operator, or
`
`specifically matching interface devices for a data acquisition system to a host
`
`system that may maximize data transfer rates but lacks the flexibility to operate
`
`with different devices. Id. at 1:17-3:21.
`
`The ‘399 Patent recognizes that the existing options were wasteful and
`
`
`
`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 2:17-36 and 3:24-27. 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 5:6-20. Accordingly, users could avoid
`
`loading specific software; improve data transfer efficiency; save time, processing
`
`power, and memory space; and avoid the waste associated with purchasing
`
`specialized computers or loading specific software for each device. Id. at 3:24-27,
`
`8:23-9:58, 9:23-34, 10:6-12 and 12:23-41. The ’399 Patent claims variations of
`
`this concept and provides a crucial, yet seemingly simple, method and apparatus
`
`for a high data rate, device-independent information transfer. Id. at 3:24-27.
`
`The interface device disclosed in the ‘399 Patent can leverage “drivers for
`
`input/output device[s] customary in a host device which reside in the BIOS system
`
`of the host device . . . .” Id. at 11:9-15; see also id. at 5:13-17 (“The interface
`
`device according to the present invention therefore no longer communicates with
`
`the host device or computer by means of a specially designed driver but the means
`
`of a program which is present in the BIOS system . . .”), 6:2-9 (describing the use
`
`of “usual BIOS routines” to issue INQUIRY instructions to the interface), and
`
`8:43-50 (describing use of BIOS routines). Similarly, the written description
`
`
`
`3
`
`
`
`describes also using drivers included in the operating system. Id. at 5:64-6:3
`
`(“Communication between the host system or host device and the interface device
`
`is based on known standard access commands as supported by all known operating
`
`systems (e.g., DOS®, Windows®, Unix®).”). Alternatively, if the required
`
`specific driver or drivers for a multi-purpose interface (such as a SCSI interface) is
`
`already present in a host device, such drivers could be used with the ‘399 Patent’s
`
`interface device instead of, or in addition to, customary drivers which reside in the
`
`BIOS. Id. at 11:9-12. Accordingly, the ’399 Patent contemplated a universal
`
`interface device that could operate independent of the manufacturer of the
`
`computer. Id. at 12:23-40. Indeed, the preferred embodiment discloses that the
`
`interface device includes three different connectors, a 50 pin SCSI connector 1240,
`
`a 25 pin D-shell connector 1280, and a 25 pin connector 1282, to allow the ‘399
`
`Patent’s interface device to connect to a variety of different standard interfaces that
`
`could be present in a host computer. Id. at 9:30-47 and FIG. 2.
`
`As is apparent from the title of the ’399 Patent, the interface device
`
`disclosed is capable of acquiring and processing analog data. As shown in FIG. 2
`
`reproduced below, the ’399 Patent discloses that the interface device 10 has an
`
`analog
`
`input at connection 16 for receiving analog data from a data
`
`transmit/receive device on a plurality of analog input channels 1505 and
`
`simultaneously digitizing the received analog data using, inter alia, a sample and
`
`
`
`4
`
`
`
`hold amplifier 1515 and an analog to digital converter 1530 that converts analog
`
`data received from the plurality of channels 1505 into digital data that may then be
`
`processed by the processor 1300. Id. at 9:49-64 and 10:27-41. “Each sample/hold
`
`circuit is connected to a corresponding input of an 8-channel multiplexer 1520
`
`which feeds its output signals via a programmable amplifier 1525 into an
`
`analog/digital converter (ADC).” Id. at 9:55-58. This arrangement of sample/hold
`
`circuits permits a single ADC to be used even when multiple analog data channels
`
`are being utilized. Id. at 9:49-64.
`
`
`
`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).
`
`Petitioners’ proposed definition of the level of ordinary skill in the art is
`
`partially consistent with Patent Owner’s view. Petitioners assert that “[a] person of
`
`ordinary skill in the art of the ‘399 Patent at the time of the alleged invention
`
`(‘POSITA’) would have a four-year degree in electrical engineering, computer
`
`science, or related field of study.” Paper 2 (Petition) at 9. According to Petitioners,
`
`“[a] POSITA would also have either a Master’s degree, or at least two years of
`
`experience in the relevant field, e.g., computer science, computer systems, or
`
`peripheral devices.” 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
`
`
`
`6
`
`
`
`with which two-way communication is to take place.” Exhibit 1001 (‘399 Patent) at
`
`1:9-13. A POSITA would have at least a bachelor’s degree in a related field such as
`
`computer engineering or electrical engineering and at least three years of experience
`
`in the design, development, and/or testing of hardware and software components
`
`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 ordinarily 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). However,
`
`claims of an expired patent are given their ordinary and customary meaning in
`
`accordance with Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc). In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Because the ‘399
`
`Patent will expire prior to a final written decision in this proceeding, Patent Owner
`
`believes the Phillips standard should apply.1
`
`
`1 In IPR2016-01839, the Board requested that Patent Owner provide an expiration
`date for the ‘399 Patent. IPR2016-01839, Paper 13 (Order) at 2. Patent Owner
`provided an expiration date of March 3, 2018 in response to that Order. IPR2016-
`01839, Paper 14 (Notice Responsive to Paper 13) at 1.
`
`
`
`7
`
`
`
`Petitioners propose that a “data transmit/receive device” should be construed
`
`as “a device capable of transmitting or receiving data.”2 Paper 2 (Petition) at 12.
`
`Patent Owner disagrees with this construction. A district court has already
`
`interpreted a “data transmit/receive device,” as that term is used in the ‘399 Patent,
`
`as a device that “is capable of either (a) transmitting data to or (b) transmitting data
`
`to and receiving data from the host device,” and the Federal Circuit left that
`
`interpretation undisturbed. Exhibit 2002 (Federal Circuit Opinion) at 11.3
`
`This “data transmit/receive device” construction is appropriate in view of the
`
`disclosure of the ‘399 Patent. For example, the very first paragraph of the ‘399
`
`Patent entitled “Field of the Invention” states: “[t]he present invention relates to
`
`the transfer of data and in particular to interface devices for communication
`
`between a computer or host device and a data transmit/receive device from which
`
`data is to be acquired or with which two-way communication is to take place.”
`
`Exhibit 1001 (‘399 Patent) at 1:9-13. In all cases, transmission of data from the
`
`“data transmit/receive device” is necessary to permit the computer or host device
`
`
`2 Petitioners’ proposed construction for this term in this proceeding is different
`from their proposed construction in the underlying District Court litigation where
`Petitioners 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 2001
`(Defendants’ Responsive Claim Construction Brief) at 32.
`3 Patent Owner is also providing a copy of the Markman Order in the underlying
`district court litigation related to this proceeding for the Board’s consideration.
`Exhibit 2004 (Markman Order).
`
`
`
`8
`
`
`
`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 ‘399 Patent, is “a device that is capable of either
`
`(a) transmitting data or (b) transmitting data and receiving data.”
`
`Petitioners further propose that “the driver for the input/output device
`
`customary in a host device” encompasses (at a minimum) “the driver for the
`
`input/output device normally part of commercially available computer systems.”
`
`Paper 2 (Petition) at 12. Patent Owner does not take a position at this time related
`
`to this limitation and reserves its right to challenge Petitioners’ proposed
`
`construction, if appropriate, later in the proceeding.
`
`Petitioners also propose that “the usual driver for the input/output device”
`
`should be interpreted to include (at a minimum) “the set of software routines used
`
`to direct a data input/output device normally part of commercially available
`
`computer systems.” Id. at 13. Patent Owner does not take a position at this time
`
`related to this limitation and reserves its right to challenge Petitioners’ proposed
`
`construction, if appropriate, later in the proceeding.
`
`Petitioners further propose that “an input/output device customary in a host
`
`device” should be interpreted to encompass (at a minimum) “a data input/output
`
`device normally part of commercially available computer systems.” Id. at 13.
`
`
`
`9
`
`
`
`Patent Owner does not take a position at this time related to this limitation and
`
`reserves its right to challenge Petitioners’ proposed construction, if appropriate,
`
`later in the proceeding.
`
`Petitioners also propose that “interface device” is not limited to “a device
`
`that is physically separate and apart from, and not permanently attached to, a data
`
`device (or a host computer).” Id. Patent Owner does not take a position at this
`
`time related to this limitation and reserves its right to challenge Petitioners’
`
`proposed construction, if appropriate, later in the proceeding.
`
`Finally, Petitioners assert that “virtual files” are not limited to a file “whose
`
`content is stored off the interface device, though it includes such files.” Id. Patent
`
`Owner does not take a position at this time related to this limitation and reserves its
`
`right to challenge Petitioners’ proposed construction, if appropriate, later in the
`
`proceeding.
`
`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). Petitioners bear
`
`the burden of demonstrating a reasonable likelihood that they 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
`
`10
`
`
`
`
`
`
`
`trial. 37 C.F.R. § 42.107(a).
`
`First, the Board should reject the Petition because Petitioners propose
`
`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. Five (5) separate petitions have been filed
`
`against the ‘399 Patent. Petitioners have not identified meaningful differences
`
`between these petitions and
`
`the grounds of rejection proposed therein.
`
`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, Petitioners’ assertions of obviousness based on combining the
`
`primary reference, United States Patent No. 5,508, 821 (“Murata”), with teachings
`
`of the secondary references are mere conclusory statements. Because Petitioners
`
`fail to provide a persuasive fact-based analysis with some rational underpinning to
`
`support these combination theories of obviousness, trial must be denied.
`
`Third, Murata and the other applied prior art do not disclose the “data
`
`transmit/receive device” limitation of the challenged independent claims of the
`
`
`
`11
`
`
`
`‘399 Patent.
`
`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.
`
`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) advances grounds of rejection that do not disclose all of the
`
`limitations of the independent claims at issue.
`
`A.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S REDUNDANT GROUNDS
`Petitioner ZTE (USA) Inc. filed two (2) separate IPR petitions related to the
`
`‘399 Patent (IPR2017-00443 and IPR2017-00714), using two (2) different
`
`primary references. A different petitioner filed three (3) other petitions related to
`
`the ‘399 Patent (IPR2016-01843, IPR2016-01839 and IPR2016-01864) using
`
`
`
`12
`
`
`
`three (3) other primary references. Because no meaningful distinction between
`
`any of these petitions was made in the instant Petition, the Board should reject
`
`this Petition.
`
`“[M]ultiple grounds, which are presented in a redundant manner by a
`
`petitioner who makes no meaningful distinction between them, are contrary to the
`
`regulatory and statutory mandates, and therefore are not all entitled to
`
`consideration.” Liberty Mut., CBM2012-00003, Paper 7 at 2. Such redundancies
`
`place a significant burden on both the Board and the Patent Owner, causing
`
`unnecessary delay and compromising the ability to complete review within the
`
`statutory deadline. Id. Eliminating redundant grounds streamlines and converges
`
`the issues. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 4-
`
`5 (PTAB June 11, 2013).
`
`A redundancy analysis must focus on whether the petitioner articulated a
`
`meaningful distinction of the relative strengths and weaknesses of its application
`
`of the prior art to one or more claim limitations. EMC Corp. v. PersonalWeb
`
`Techs., LLC, IPR2013-00087, Paper 25 at 3-4 (PTAB June 5, 2013). The
`
`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
`
`
`
`13
`
`
`
`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).
`
`Petitioners, along with another petitioner, Apple, Inc., have collectively
`
`raised ten (10) grounds of unpatentability against overlapping challenged claims
`
`involving the ‘399 Patent. The grounds, filed serially across five (5) petitions, are
`
`as follows:
`
`Proceeding Patent Claims Ground and References
`2017-
`1-4, 6-8, 11,
`§103 Murata/Schmidt/Lin
`00443
`13-15
`§103 Murata/Schmidt/Lin/Microsoft Press
`Computer Dictionary
`§103 Murata/Schmidt/Lin/Beretta
`§103 Aytac/SCSI Specification/Lin
`
`2017-
`00714
`2016-
`01839
`2016-
`01843
`2016-
`01864
`
`
`1-3, 5, 6, 11,
`14, 15
`1, 3, 5, 11, 14,
`15
`1, 3, 5, 11, 14,
`15
`1, 3, 5, 11, 14,
`15
`
`§103 Kawaguchi/Schmidt
`§103 Murata/Schmidt
`§103 Ard/Schmidt/Webb
`§103 Ard/Schmidt/Webb/Johnson
`§103 Pucci/Kepley/Schmidt
`§103 Pucci/Kepley/Schmidt/Li
`
`By way of example, Petitioners use Murata as the primary reference to
`
`challenge the various claims of the ‘399 Patent in the instant Petition. This
`
`analysis is clearly redundant of the other petitions which utilize Murata,
`
`
`
`14
`
`
`
`Kawaguchi, Ard, Aytac and Pucci as primary references to challenge the same
`
`claims.4 Petitioners provide no explanation on the redundancy issue in the instant
`
`Petition. Petitioners also fail to discuss how any alleged distinctions between the
`
`primary references are relevant to any particular claim limitation at issue or why
`
`some of the references are stronger or weaker as applied to any given limitation of
`
`the ‘399 Patent. Indeed, the Petitions for IPR2017-00443 and IPR2017-00714
`
`utilize nearly identical prior art with the exception of the Aytac reference in
`
`IPR2017-00714 being inserted in place of the Murata reference of IPR2017-
`
`00443. Yet, the Petition contains no discussion of why Aytac or Murata more
`
`closely satisfy certain limitations in different respects. Because Petitioners rely
`
`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, institution of the instant
`
`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,
`
`
`4 The Board has already determined that the Murata/Schmidt ground of rejection
`presented in IPR2016-01839 and applied to the ‘399 Patent was redundant of the
`instituted Kawaguchi/Schmidt combination presented
`in
`that same
`IPR.
`Consequently, the Murata/Schmidt combination presented in the instant Petition is
`also redundant of that instituted Kawaguchi/Schmidt combination.
`
`
`
`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, Petitioners make very little effort to explain why the various
`
`references that allegedly disclose all of the limitations of the asserted claims of the
`
`‘399 Patent should or could be combined. Petitioners state, for example, “[t]he
`
`combination of Murata, Schmidt and Lin is therefore nothing more than an
`
`application of known techniques (SCSI signaling in Schmidt and use of a
`
`sampling circuit with an image scanner in Lin) to a known device (Murata’s
`
`scanner) to yield predictable results (the scanner identifies and acts as a SCSI hard
`
`disk and uses a sampling circuit in connection with performing A/D conversion).”
`
`Paper 2 (Petition) at 19. This same style of conclusory analysis is systemic
`
`throughout the Petition. See, e.g., id. at 20, 24 and 27.
`
`However, the Board has determined that this very 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
`
`
`
`18
`
`
`
`‘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,
`
`Petitioners’ similar analysis in the instant Petition does not meet the standards set
`
`forth in 35 U.S.C. § 103 and institution should be denied.
`
`In a recent decision, the Federal Circuit also identified several insufficient
`
`articulations of a motivation to combine references in an obviousness rejection.
`
`In re Nuvasive, Inc., No. 2015-1670 (Fed. Cir. December 7, 2016). The Federal
`
`Circuit stated:
`
`insufficient
`some
`identified
`We have, however,
`articulations of motivation
`to combine.
` First,
`“c
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