`
`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 IPR2017-00448
`Patent 6,895,449
`_______________
`___________________________________
`
`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 ‘449 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 ................................................................................... 15
`
`C.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BECAUSE
`ARD IS NOT PRIOR ART ..................................................................... 19
`IV. CONCLUSION ............................................................................................. 26
`
`i
`
`
`
`
`
`Ex. No.
`2001
`2002
`2003
`
`2004
`
`2005
`
`2006
`
`
`
`
`Ex. No.
`1101
`1102
`1103
`1104
`1105
`1106
`1107
`1108
`1109
`
`1110
`1111
`
`1112
`
`1113
`
`EXHIBIT LIST
`
`Currently Filed – Patent Owner
`
`Description
`Declaration of Dr. Kenneth Fernald
`Defendants’ Responsive Claim Construction Brief
`In re Papst Licensing GmbH & Co. Litigation, Case No. 7-cv-493
`(D.D.C.), Order Regarding Claim Construction
`IEEE Standard Signaling Method for a Bidirectional Parallel
`Peripheral Interface for Personal Computers, IEEE Std 1284-1994
`Small Computer System Interface-2 (SCSI-2), ANSI X3.131-1994,
`American National Standard for Information Systems (ANSI).
`Markman Order in Papst Licensing GmbH & Co., KG v. Apple Inc.
`(6:15-CV-01095-RWS)
`
`Previously Filed – Petitioner
`
`Description
`U.S. Patent 6,895,449
`File History for U.S. Patent No. 6,895,449
`Declaration of Kevin C. Almeroth
`Curriculum vitae of Kevin C. Almeroth
`U.S. Patent No. 5,508,821 to Murata
`U.S. Patent No. 5,915,106 to Ard
`U.S. Patent No. 5,850,484 to Beretta et al.
`European Patent Office Publication Number 0 685 799 A1
`IBM Corp., Communication Method between Devices Through FDD
`Interface 38 IBM Technical Disclosure Bulletin 245
`Ray Duncan, The MS-DOS Encyclopedia (1988)
`In re Papst Licensing Dig. Camera Pat. Litig., 778 F.3d 1255, 1265
`(Fed. Cir. 2015)
`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, No. 1:07-mc-00493 (D.D.C. June 3, 2016)
`
`ii
`
`
`
`
`
`1114
`
`1115
`1116
`
`1117
`
`1118
`1119
`1120
`
`1121
`
`1122
`1123
`1124
`1125
`
`1126
`1127
`
`1128
`
`1129
`
`1130
`1131
`
`Am. Nat’l Standard Inst., Inc., Am. Nat’l Standard for Info. Sys’s,
`Small Computer System Interface-2, ANSI X3.131-1994 (1994)
`(“SCSI Specification”)
`US Patent No. 6,470,399
`Patent Cooperation Treaty Patent Application PCT/EP98/01187
`(published as PCT Pub. No. WO98/39710)
`As-Filed Filed German priority document Patent Application 197
`08 755.8
`File History for U.S. Patent No. 6,470,399
`’399 German Application Publication (DE 197 08 755)
`Certified Translation of Published ’399 German Application (DE
`197 08 755)
`English Translation of PCT Application PCT/EP98/01187
`(published as PCT Pub. No. WO98/39710)
`U.S. Patent No. 4,589,063
`U.S. Patent No. 5,038,320
`U.S. Patent No. 5,787,246
`Comparison of excerpts of File History for U.S. Patent
`Application No. 08/411,369 and U.S. Patent No. 5,850,484 to
`Beretta et al. (Ex. 1107)
`File History for U.S. Patent Application No. 08/411,369
`Vetterli & Nussbaumer, Simple FFT and DCT Algorithms, 6
`Signal Processing 267-78 (1984)
`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)
`Friedhelm Schmidt, The SCSI Bus and IDE Interface (1995)
`Dave Williams, The Programmer’s Technical Reference: MSDOS,
`IBM PC & Compatibles (1990)
`
`iii
`
`
`
`
`
`
`I.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioners Huawei Device Co., Ltd., LG Electronics, Inc., and ZTE (USA)
`
`Inc. (collectively, “Petitioners”) did not submit a statement of material facts in
`
`their Petition for inter partes review. Paper 1 (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 the ‘449 Patent.
`
`
`
`
`
`
`B. OVERVIEW OF THE ‘449 PATENT
`The ’449 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 1101 (‘449 Patent) at 3:26-30. 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
`
`1:35-55. As such, there was an increasing demand to transfer that information to
`
`commercially-available, general purpose computers. Id. at 1:21-34. 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 1:12-3:19.
`
`The ‘449 Patent recognizes that the existing options were wasteful and
`
`inefficient and presents a solution that would achieve high data transfer rates,
`
`2
`
`
`
`
`
`without specialized software, while being sufficiently flexible to operate
`
`independent of device or host manufacturers. Id. at 3:26-31. The resulting
`
`invention would allow a data acquisition system to identify itself as a type of
`
`common device so as to leverage the inherent capabilities of general-purpose,
`
`commercially-available computers. Id. at 5:2-22. 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 3:26-30,
`
`8:18-9:58, 10:9-15. The ‘449 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 3:26-30.
`
`The interface device disclosed in the ‘449 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 10:11-12; see also id. at 4:17-20 (“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 . . .”), 5:6-8 (describing the use
`
`of “usual BIOS routines” to issue INQUIRY instructions to the interface), and
`
`7:11-21 (describing use of BIOS routines). Similarly, the written description
`
`describes also using drivers included in the operating system. Id. at 4:63-66
`
`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 ‘449 Patent’s
`
`interface device instead of, or in addition to, customary drivers which reside in the
`
`BIOS. Id. at 10:9-25. Accordingly, the ‘449 Patent contemplated a universal
`
`interface device that could operate independent of the manufacturer of the
`
`computer. Id. at 11:7-10. 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 ‘449
`
`Patent’s interface device to connect to a variety of different standard interfaces that
`
`could be present in a host computer. Id. at 8:30-47 and FIG. 2.
`
`As is apparent from the title of the ’449 Patent, the interface device
`
`disclosed is capable of acquiring and processing analog data. As shown in FIG. 2
`
`reproduced below, the ’449 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
`
`4
`
`
`
`
`
`data received from the plurality of channels 1505 into digital data that may then be
`
`processed by the processor 1300. Id. at 8:49-64.
`
`
`
`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
`
`5
`
`
`
`
`
`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 ‘449 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 1 (Petition) at 7. 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. at 7-8.
`
`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 1101 (‘449 Patent) at
`
`1:13-17. 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
`
`6
`
`
`
`
`
`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)).
`
`Petitioners propose that a “data transmit/receive device” should be construed
`
`as “a device capable of transmitting or receiving data.”1 Paper 1 (Petition) at 16.
`
`
`1 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
`
`7
`
`
`
`
`
`Patent Owner disagrees with this construction. A district court has already
`
`interpreted a “data transmit/receive device,” as that term is used in the ‘449 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 1111 (Federal Circuit Opinion) at 11.
`
`This “data transmit/receive device” construction is appropriate in view of the
`
`disclosure of the ‘449 Patent. For example, the very first paragraph of the ‘449
`
`Patent entitled “Description” 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 1101
`
`(‘449 Patent) at 1:13-17. In all cases, transmission of data from the “data
`
`transmit/receive device” is necessary to permit the computer or host device to
`
`acquire data from the “data transmit/receive device” or to permit two-way
`
`communication with it in the form of transmission and reception of data to and
`
`from the “data transmit/receive device.” Accordingly, a “data transmit/receive
`
`device,” as that term is used in the ‘449 Patent, is “a device that is capable of either
`
`(a) transmitting data or (b) transmitting data and receiving data.”
`
`
`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 2002
`(Defendants’ Responsive Claim Construction Brief) at 32.
`
`8
`
`
`
`
`
`Petitioners further propose that “simulating a virtual file system” be
`
`construed as “emulating a file system, including a directory structure, such that the
`
`host device use its native driver to access data even if the data is not actually on a
`
`device for which the native driver was designed.” Paper 1 (Petition) at 17. Patent
`
`Owner does not take a position at this time related to this term and reserves its
`
`right to challenge Petitioners’ proposed construction, if appropriate, later in the
`
`proceeding.
`
`Petitioners also propose that “interface device” should not be limited to “a
`
`device that is physically separate and apart from, and not permanently attached to,
`
`a data device (or a host computer).” Paper 1 (Petition) at 17. Patent Owner does
`
`not take a position at this time related to this term and reserves its right to
`
`challenge Petitioners’ proposed construction,
`
`if appropriate,
`
`later
`
`in
`
`the
`
`proceeding.2
`
`
`
`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).
`
`
`2 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 2006 (Markman Order).
`
`9
`
`
`
`
`
`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 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. Petitioners filed three (3) separate IPR
`
`petitions against the ‘449 Patent that collectively assert grounds of rejection based
`
`on five (5) different grounds of unpatentability without adequate explanation about
`
`why some of the primary references relied upon in those grounds more closely
`
`satisfy certain limitations of the ‘449 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, 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
`
`10
`
`
`
`
`
`fail to provide a persuasive fact-based analysis with some rational underpinning to
`
`support these combination theories of obviousness, trial must be denied.
`
`Third, every ground recited in the Petition relies on Ard which was filed on
`
`March 20, 1997. Exhibit 1106 (Ard). The ‘449 Patent claims priority to a German
`
`application filed March 4, 1997 which predates Ard. Ard therefore fails to qualify
`
`as prior art under any section of 35 U.S.C. § 102. Petitioners argue Ard is an
`
`intervening reference because none of the challenged claims are entitled to priority
`
`benefit of the German application. Paper 2 (Petition) at 10-15. Petitioners’
`
`argument however is meritless because the Petition fails to show the German
`
`application lacks written description for using driver programs in connection with a
`
`“multi-purpose interface.” Since the German application provides written
`
`description of a multi-purpose interface, the ‘449 patent is entitled to a priority date
`
`of March 4, 1997 prior to the date of application of Ard. Ard therefore does not
`
`qualify as prior art, and the Petition should be denied.
`
`Patent Owner does not attempt to fully address the myriad of other
`
`deficiencies of the underdeveloped grounds asserted in the Petition. See
`
`Travelocity.com L.P. et al. v. Cronos Technologies, LLC, CBM 2014-00082, Paper
`
`12 at 10 (PTAB Oct. 16, 2014) (“nothing may be gleaned from the Patent Owner’s
`
`challenge or failure to challenge the grounds of unpatentability for any particular
`
`reason”). However, the deficiencies addressed herein are dispositive and preclude
`
`11
`
`
`
`
`
`trial on any asserted grounds.
`
`II. THE PETITION FAILS TO MEET THE REQUIREMENTS FOR
`INSTITUTING AN INTER PARTES REVIEW
`
`Trial should not be instituted because the Petition does not comply with at
`
`least three Board requirements. The Petition (1) violates the redundancy
`
`principles established by the Board; (2) contains only conclusory obviousness
`
`assertions; and (3) applies art that does not qualify as prior art under any section
`
`of 35 U.S.C. § 102.
`
`A.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL BASED ON
`THE PETITION’S REDUNDANT GROUNDS
`Petitioner ZTE (USA) Inc. filed three (3) separate IPR petitions related to
`
`the ‘449 Patent (IPR2017-00415, IPR2017-00448, and IPR2017-00713), using
`
`two (2) 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
`
`12
`
`
`
`
`
`statutory deadline. Id. Eliminating redundant grounds streamlines and converges
`
`the issues. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 4-
`
`5 (PTAB June 11, 2013).
`
`A redundancy analysis must focus on whether the petitioner articulated a
`
`meaningful distinction of the relative strengths and weaknesses of its application
`
`of the prior art to one or more claim limitations. EMC Corp. v. PersonalWeb
`
`Techs., LLC, IPR2013-00087, Paper 25 at 3-4 (PTAB June 5, 2013). The
`
`Petitioner cannot evade the prohibition against horizontally redundant grounds by
`
`spreading them among multiple petitions. SAS Inst. Inc. v. Complementsoft, LLC,
`
`IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013).
`
`Horizontal redundancy exists when proposed grounds apply “a plurality of
`
`prior art references. . . not in combination to complement each other but as
`
`distinct and separate alternatives.” Liberty Mut., CBM2012-00003, Paper 7 at 3.
`
`Redundant references “provide essentially the same teaching to meet the same
`
`claim limitation, and the associated arguments do not explain why one reference
`
`more closely satisfies the claim limitation at issue in some respects than another
`
`reference, and vice versa.” Id. (emphasis in original).
`
`Petitioners have collectively raised five (5) grounds of unpatentability
`
`against overlapping challenged claims in their three (3) related petitions involving
`
`the ‘449 Patent. Petitioners’ grounds, filed serially across these three (3) petitions
`
`13
`
`
`
`
`
`are as follows:
`
`Proceeding Patent Claims Ground and References
`2017-
`1-10, 12-13,
`§103 Murata/Schmidt/MS-DOS Encyclopedia
`00415
`15-18
`§103 Murata/Schmidt/MS-DOS
`Encyclopedia/Beretta
`§103 Murata/Ard/MS-DOS Encyclopedia
`§103 Murata/Ard/MS-DOS Encyclopedia/Beretta
`§103 Aytac/SCSI Specification/MS-DOS
`Encyclopedia/Admitted Prior Art
`
`1-10, 12-13,
`15-18
`1, 16, 17
`
`2017-
`00448
`2017-
`00713
`
`
`By way of example, Petitioners use Murata as the primary reference to
`
`challenge the various claims of the ‘449 Patent in the instant Petition. This
`
`analysis is redundant of the other petitions which utilize Murata and Aytac as
`
`primary references to challenge the same claims. Petitioners provide no
`
`explanation on the redundancy issue in the instant Petition. Petitioners also fail to
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`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
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`stronger or weaker as applied to any given limitation of the ‘449 Patent. Indeed,
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`the Petitions for IPR2017-00415 and IPR2017-00448 utilize nearly identical prior
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`art with the exception of the Ard reference in IPR2017-00448 being inserted in
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`place of the Schmidt reference of IPR2017-00415. Yet, the Petition contains no
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`discussion for why Ard or Schmidt more closely satisfy certain limitations in
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`different respects. Because Petitioners rely on multiple references to provide
`
`essentially the same teaching to meet the same claim limitations without
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`14
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`
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`providing any explanation for why one reference more closely satisfies given
`
`limitations than another reference, institution of the instant Petition should be
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`denied.
`
`Filing numerous IPR petitions for the purpose of circumventing the word
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`count requirement of 37 C.F.R. § 42.24(a) is also an inappropriate excuse for
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`filing multiple petitions. SAS Inst. Inc. v. Complementsoft, LLC, IPR2013-00581,
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`Paper 17 (PTAB Feb. 24, 2014). The Petitioner has an obligation to advance its
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`most salient grounds in one petition or to explain in detail why that cannot be
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`accomplished due to the relative strengths and weaknesses of particular prior art
`
`applied
`
`to particular claims
`
`that need
`
`to be addressed
`
`in multiple
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`grounds/petitions. Id. Absent such an explanation, the Board should not institute
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`trial because the serial filing of petitions creates undue burden on the Patent
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`Owner and Board and conflicts with the very purpose of IPRs—to secure the
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`“just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. §
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`42.1(b).
`
`B.
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`
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`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
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`15
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`
`
`
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`prior art are such that the claimed invention as a whole would have been obvious
`
`before the effective filing date of the claimed invention to a person having
`
`ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. §
`
`103.
`
`
`
`As required by MPEP 2143.01, obviousness can be established by
`
`combining or modifying the teachings of the prior art to produce the claimed
`
`invention where there is some teaching, suggestion, or motivation to do so. In re
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`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
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`obviousness analysis). More specifically, in accordance with MPEP 2143.01(IV),
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`a statement that modification of the prior art to meet the claimed invention would
`
`have been well within the ordinary skill of the art at the time the claimed
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`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
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`combine the teachings of the references. Intri-Plex Techs., Inc. v. Saint-Gobain
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`Performance Plastics Rencol Ltd., IPR2014-00309, Paper 83 at 19 (PTAB Mar.
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`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
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`16
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`
`
`
`
`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
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness to combine the teachings of the references.
`
`
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`The Board has previously denied petitions on obviousness grounds because
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`the Petitioner failed to explain how references may be combined and why the
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`combination accounts for all features of the claims. Dell, Inc. v. Elecs. &
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`Telecommc’ns Res. Inst., IPR2014-00152, Paper 12 at 26-28 (PTAB May 16,
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`2014); see also Dominion Dealer Sols., LLC v. Autoalert, Inc., IPR2013-00223,
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`Paper 9 at 19 (PTAB Aug. 15, 2013).
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`Here, Petitioners make very little effort to explain why the various
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`references that allegedly disclose all of the limitations of the asserted claims of the
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`‘449 Patent should or could be combined. In discussing the combination of
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`Murata with Ard, Petitioners state, for example, “[a] POSITA would have
`
`understood that combining Ard’s device drive emulator 41 with the scanner 20 of
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`Murata would have been a predictable use and combination of known elements,
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`and would not have required undue experimentation.” Paper 1 (Petition) at 34.
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`This same style of conclusory analysis is systemic throughout the Petition. See,
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`17
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`
`
`
`
`e.g., id. at 36, 40, and 49.
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`However, the Board has determined that this very type of analysis is
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`insufficient for asserting obviousness. TRW Automotive US LLC v. Magna
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`Electronics Inc., IPR2014-00258, Paper 16 at 15 (PTAB June 26, 2014). In TRW,
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`the Board determined that “TRW does not support its ‘simple substitution’ or
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`‘obvious to try’ rationales with explanation or evidence.” Id. “TRW does not
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`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
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`‘reasonable expectation of success.’” Id. The Board also determined that TRW’s
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`rationale for combining certain references was conclusory when the only
`
`explanation offered was because “doing so would be nothing more than [the] use
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`of a known technique to improve similar devices in the same way,” and “such
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`combination would also be tantamount to combining prior art elements according
`
`to known methods to yield predictable results.” Id. at 16. Consequently,
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`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.
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`In a recent decision, the Federal Circuit also identified several insufficient
`
`articulations of a motivation to combine references in an obviousness rejection.
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`In re Nuvasive, Inc., No. 2015-1670 (Fed. Cir. December 7, 2016). The Federal
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`18
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`
`
`
`
`Circuit stated:
`
`insufficient
`some
`identified
`We have, however,
`articulations of motivation
`to combine.
` First,
`“conclusory statements” alone are insufficient and,
`instead, the finding must be supported by a “reasoned
`explanation.” Lee, 277 F.3d at 1342, 1345. Second, it is
`not adequate to summarize and reject arguments without
`explaining why
`the PTAB accepts
`the prevailing
`argument. See Cutsforth, Inc. v. Motive Power, Inc., 636
`F. App’x 575, 578 (Fed. Cir. 2016) (“The majority of the
`[PTAB]’s Final Written Decision is spent summarizing
`the parties’ arguments and offers only conclusory
`analysis of its own. While the decision d