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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________________________
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`RUIZ FOOD PRODUCTS, INC.,
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`PETITIONER,
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`v.
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`MACROPOINT LLC,
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`PATENT OWNER.
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`________________________________
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`Case IPR2017-02016
`Patent 8,275,358
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`________________________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................ 1
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`II.
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`Patent Owner Does Not Contest Claims 13-18 Are Obvious ......................... 3
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`III. Claims 1-12 and 19-30 Are Obvious ............................................................. 3
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`A. Motivation to modify Poulin ............................................................... 5
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`B.
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`No reliance on hindsight ................................................................... 10
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`IV. CONCLUSION .......................................................................................... 12
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`i
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`LIST OF EXHIBITS
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`
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`Exhibit 1001 U.S. Patent No. 8,275,358 to Adelson
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`Exhibit 1002 Expert Declaration of Scott Denning
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`Exhibit 1003 CV of Scott Denning
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`Exhibit 1004 Prosecution File History for U.S. Patent No. 8,275,358
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`Exhibit 1005 U.S. Patent Pub. No. 2002/0115453 to Poulin et al. (“Poulin”)
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`Exhibit 1006 U.S. Patent No. 6,591,242 to Karp et al. (“Karp”)
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`Exhibit 1007 U.S. Patent Publication No. 2008/0186166 to Zhou et al. (“Zhou”)
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`Exhibit 1008
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`CTIA, Best Practices and Guidelines for Location-Based Services,
`May 23, 2012.
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`Exhibit 1009 U.S. Patent No. 5,592,538 to Kosowsky et al. (“Kosowsky”)
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`Exhibit 1010 U.S. Patent Pub. No 2007/0159322 to Campbell (“Campbell”)
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`Exhibit 1011 U.S. Patent No. 8,045,995 to King et al. (“King”)
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`Exhibit 1012 Order Dismissing Complaint Without Prejudice, FourKites, Inc. v
`MacroPoint, LLC, Case No. 1:16-cv-02703-CAB (N.D. Ohio) (entered
`on June 27, 2017)
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`Exhibit 1013 Proof of Service of Complaint of Patent Infringement, MacroPoint,
`LLC v Ruiz Food Products, Inc., 6:16-cv-01133 (E.D. TX) (served on
`August 31, 2016)
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`Exhibit 1014 U.S. Patent Publication No. 2014/0295798 to Roach (“Roach”)
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`
`
`ii
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`
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`Exhibit 1015 Declaration of Scott Denning in support of Petitioner’s Opposition to
`Patent Owner’s Motion to Amend
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`Exhibit 1016 US Patent Application Publication No. 2008/0045232 to Cone
`(“Cone”)
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`Exhibit 1017 Guester, M. and Liu, X, “Protecting Privacy in Continuous Location-
`Tracking Applications”, IEEE COMPUTER SOCIETY, 1540-7993/04
`(March/April 2004). (“Guester”)
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`Exhibit 1018 U.S. Patent No. 4,785,408 to Britton et al.
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`Exhibit 1019 Rebuttal Expert Report of Ivan Zatkovich
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`Exhibit 1020 Deposition Transcript of David H Williams
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`Exhibit 1021 U.S. Patent No. 5,199,062 to Von Meister et al.
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`Exhibit 1022 U.S. Patent No. 5,592,538 to Kosowsky et al.
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`Exhibit 1023 U.S. Patent No. 6,442,391 to Johansson et al.
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`iii
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`I.
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`INTRODUCTION
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`Patent Owner’s Response (“PO Resp.”) presents identical arguments,
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`worded in almost the exact same way, as Patent Owner’s Preliminary Response.
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`The Board already considered and dismissed these arguments in its Institution
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`Decision for this case, see Paper #7, Institution Decision at 11-14, and Patent
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`Owner does not even attempt to rebut the Board’s preliminary findings. Patent
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`Owner has presented no basis for the Board to reach a different outcome in its
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`Final Written Decision.
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`Just as in the preliminary response, Patent Owner argues that the Petition
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`provides no reason to modify Poulin without hindsight. PO Resp. at 20-24.
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`However, as the Board found in the Institution Decision, the Petition provides a
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`reason to modify Poulin that does not rely on hindsight. Institution Decision at 13-
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`14 (“Thus, we do not agree with Patent Owner’s argument that modification of
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`Poulin relies on hindsight or lacks a persuasive reason for the modification of
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`Poulin”) (citing to the Petition at 20-21, Ex. 1002 at ¶¶66-68 and Ex. 1005 at ¶¶2,
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`22, 23 and 67).
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`The PO Resp. does not meaningfully address, let alone overcome, any of the
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`evidence supporting the grounds for obviousness provided in the Petition and cited
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`by the Board in the Institution Decision. Indeed, Patent Owner did not depose Mr.
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`Denning, Petitioner’s expert, to challenge the testimony he provided for why the
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`1
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`claims were obvious. As set forth in the Petition, Poulin’s system provides notice
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`that consent will result in location data being disclosed to others but does not
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`explicitly teach that this notice is transmitted as automated voice message during
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`the telephone call. See Pet. at 16-23. However, it would have been obvious to a
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`person of ordinary skill in the art at the time of the invention (“POSITA”) to apply
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`Poulin’s teaching of using an IVR system to transmit the notice during a call. Id.
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`While Patent Owner submitted a declaration in support of its PO Resp., its
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`expert—Mr. Williams—merely repeated the same arguments from Patent Owner’s
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`Preliminary Response. When cross examined at deposition, Mr. Williams agreed
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`with Mr. Denning that Poulin teaches all but one of the limitations in the
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`independent claims, disagreeing only that the Poulin fails to teach “explicit notice,”
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`for example stating “‘you are being tracked,’ there is nothing like that in Poulin.”
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`Ex. 1002 at ¶51; Ex. 1020 at 26:23-28:18, 29:24-31:21, 32:24-25 (“For my
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`viewing of this, I viewed it [notice] as needing to be explicit.”).
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`However, since notice is given its plain and ordinary meaning, there is no
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`basis to allege that the specific text “you are being tracked” or some other explicit
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`statement is required of the claims. See Institution Decision at 6-7. Accordingly,
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`there is no credible dispute that Poulin renders obvious the claims under the
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`broadest reasonable interpretation of the claims.
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`
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`2
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`For the reasons set forth below, the Board should maintain the findings from
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`the Institution Decision and issue a Final Written Decision finding claims 1-30 are
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`unpatentable.
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`II.
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`Patent Owner Does Not Contest Claims 13-18 Are Obvious
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`Patent Owner does not contest that claims 13-18 are obvious over the
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`grounds presented in the Petition. PO Resp. at 17-18. Rather than contest
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`patentability of issued claims 13-18, Patent Owner proposes substitute amended
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`claims to replace the issued claims as set forth in Patent Owner’s Motion to
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`Amend. Id.1 For the reasons set forth in the Petition, and not contested by Patent
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`Owner, the Board should find that claims 13-18 are unpatentable as obvious. See
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`Petition at 37-44 (claims 13, 15-18 obvious over Poulin) and 54-56 (claim 14
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`obvious over Poulin in view of Karp).
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`III. Claims 1-12 and 19-30 Are Obvious
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`Patent Owner’s arguments are directed to independent claims 1 and 19,
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`while the other claims are asserted to be patentable based upon their dependency
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`from claims 1 or 19. PO Resp. at 18-24.2 Patent Owner argues that the Petition
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`1 The Board should not accept the proposed substitute claims for the reasons set
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`forth in Petitioner’s Opposition to the Motion to Amend filed concurrently.
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`2 Mr. Williams’ Declaration appears to separately address claims 3, 8, 12, 13, 21,
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`and 26. However, there is no corresponding argument in the Response for those
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`3
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`
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`provides no reason to modify Poulin without hindsight. In particular, Patent
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`Owner states:
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`
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`Neither Petitioner nor Mr. Denning identify any reason—apart from
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`the identified problem solved by the technology of the ’358 patent—
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`why a POSITA would have been motivated to modify Poulin. Poulin
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`already provides a means for obtaining consent. Petitioner’s
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`conclusory argument is nothing but an attempt to use the invention of
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`the ’358 patent to justify modifying Poulin to arrive at claim 1 of the
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`’358 patent. This is classic, impermissible hindsight.
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` PO Resp. at 24.
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`Yet, this assertion is belied by Patent Owner’s own admission that the
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`“Petitioner and Mr. Denning offer two rationales for why a POSITA allegedly
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`would be motivated to modify Poulin.” PO Resp. at 20 (citing Ex. 1002 at ¶¶65-
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`68). These cited paragraphs of Mr. Denning’s declaration discuss only Poulin and
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`not the ’358 patent and explain why a POSITA would have used IVR to provide
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`the notice as an automated voice message instead of Poulin’s embodiment of using
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`
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`claims. Hence, the Board should not consider any of Mr. Williams’ testimony for
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`those claims. See IPR2014-00077, Apple Inc. v. Rensselaer Polytechnic Inst.,
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`Decision on Req. for Rehearing, Paper No. 14 at 5 (June 13, 2014) (“We decline to
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`consider information presented in a supporting declaration, but not discussed in a
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`petition,…”). Therefore, claims 3, 8, 12, 13, 21 are unpatentable for the reasons
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`presented in the Petition.
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`4
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`text messages and web pages to communicate with users. Thus, rather than the
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`Petition failing to “identify any reason” other than hindsight, the main complaint
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`the Patent Owner seems to have is that it disagrees with Mr. Denning’s testimony
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`of how a POSITA would view Poulin. However, Patent Owner did not depose Mr.
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`Denning and Mr. Denning’s testimony stands unrebutted.
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`Furthermore, Patent Owner’s expert agrees with Mr. Denning that there are
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`many reasons to choose IVR over other alternatives when creating a system. Mr.
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`Williams stated that it was known in the art at the time of the filing of the ’358
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`patent that “Interactive voice response [IVR] was one of the key automation tools”
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`and that older demographics would be “more comfortable with an IVR” than web
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`based technologies. Ex. 1020 at 10:7-20, 39:1-9 and 40:6-17.
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`Accordingly, both experts agree that providing notice via IVR was a known
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`solution that required no hindsight and was not first identified by the ’358 patent.
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`A. Motivation to modify Poulin
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`The suggestion and motivation to modify Poulin is based at least on the
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`teachings of Poulin itself and the knowledge of a POSITA. Sibia Neurosciences,
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`Inc. v. Cadus Pharmaceutical Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000) (“In
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`appropriate circumstances, a single prior art reference can render a claim
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`obvious…. suggestion or motivation may be derived from the prior art reference
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`5
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`itself, from the knowledge of one of ordinary skill in the art, or from the nature of
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`the problem to be solved.”) (emphasis added) (internal citations omitted).
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`With regards to Poulin’s teaching of the notice, Mr. Denning testified that:
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`1) Poulin explicitly suggests the system “could use the IVR” to interact with
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`subscribers to administer the communication service and obtain profile information
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`(citing Ex. 1005 at [0046] and [0042]); 2) a POSITA would consider Poulin’s
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`teachings of asking permission to share location information as a notice that
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`consent will result in location information being collected and shared (citing Ex.
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`1005 at [0002], [0022], [0023], and [0067]); and 3) in light of these teachings a
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`POSITA would have recognized IVR as “one choice when designing the system”
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`and that the “IVR message can and should include a message that asks for
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`permission to share the subscriber’s location” “during registration and whenever
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`the user updates her profile.” Ex. 1002 at ¶¶48-50, 64-69; see also Petition at 9-10,
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`18-23 (citing Ex. 1002 at ¶¶64-69 and Ex. 1005 at ¶¶[0002], [0022], [0023],
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`[0042], [0046] and [0067]).
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`Therefore, although the primary embodiment in Poulin is based on
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`interacting with subscribers through text messages, a POSITA would have
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`considered Poulin’s explicit teaching that the interaction with subscribers could be
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`through IVR and, applying the knowledge of a POSITA, would have designed the
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`system to provide a voice message requesting permission to share location with
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`6
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`others (i.e., notice that consenting will result in location information being
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`disclosed) during a phone call to register or update profile information. See KSR
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`Int’l Co. v Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is
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`also a person of ordinary creativity, not an automaton.”).
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`Patent Owner argues that a POSITA would not have modified Poulin
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`because “Poulin can be used to obtain consent for the disclosure of a user’s
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`location without any modification or changes whatsoever.” PO Resp. at 21 (citing
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`Ex. 2002 at ¶¶58-62). However, the fact that Poulin already teaches obtaining
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`consent supports the finding of obviousness, not the opposite. Indeed, Petitioner
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`directly relies on Poulin’s teaching for providing notice and obtaining consent,
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`which is provided in the context of text messages, as support for why it would have
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`been obvious to implement consent and notice as an automated voice message in
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`the context of IVR. Petition at 18-23 (citing Ex. 1002 at ¶¶64-69 and Ex. 1005 at
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`¶¶[0002], [0022], [0023], [0042], [0046] and [0067]).
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`Further, Patent Owner fails to grapple with any of the independent evidence
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`relied upon in the Petition and by Mr. Denning. The Petition and Mr. Denning
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`provided ample independent evidence that IVRs and notice using IVRs was well
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`known in the art at the time of the filing of the ’358 patent. For example, evidence
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`was provided that IVRs were well known and that IVRs are equivalent to websites
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`or SMS messages for signing up or consenting to location based services. Petition
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`7
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`
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`at 9-10 and Ex. 1002 at ¶¶48-49 (relying on Ex. 1009 and 1010 for ubiquity of IVR
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`systems and their interchangeability with text-based systems.). Ex. 1010 even
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`states that users are contacted for consent to track. Ex. 1010 at [0032] (“Each
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`person can be located just once using LBS (location based services) and are
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`preferably just once or if necessary more than once asked if they are OK using a
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`messaging service.”). The consent can be asked for via “… email, instant
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`messaging, mobile instance messaging, SMS (short message service), MMS,
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`paging, outgoing IVR, or other communication service or technology.” Ex. 1010 at
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`[0035] (emphasis added). All of this uncontroverted evidence is the background
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`with which a POSITA would view the Poulin reference.
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`Finally, the Petition does not “gratuitously” add a notice to Poulin (PO Resp.
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`at 22), but instead modifies Poulin’s text-based notice message with a notice
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`implemented via the IVR system as suggested by Poulin. Moreover, Patent
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`Owner’s argument regarding a user being “less likely to remain on the call and to
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`take the desired action if required to listen to an automated voice message that is
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`unnecessary under Poulin” is baseless. PO Resp. at 22. The notice messages relied
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`upon in the Petition are not “unnecessary” but are instead messages that ask for
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`permission to share the subscriber’s location which an integral part of the operation
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`and design of Poulin. Ex. 1002 at ¶¶66-68. Without subscriber’s permission to
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`share location, the system of Poulin would have no purpose.
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`8
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`
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`In addition, Patent Owner presents no evidence or data to support Mr.
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`Williams’ assertion that a voice message requesting permission to share location
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`data would result in subscribers not continuing a telephone call. Thus, this
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`testimony “is entitled to little or no weight.” 37 C.F.R. § 42.65. Further, Mr.
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`Denning has testified that the opposite is true, in that “users would avoid services
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`that did not treat their privacy seriously, and one way to show that a company is
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`treating user’s privacy seriously is to provide the user the ability to grant, deny,
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`and revoke permission to track the user.” Ex. 1002 at ¶¶45-46.
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`Mr. Denning’s testimony is also supported by background references,
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`including the guidelines to protect user privacy set forth by CTIA, a leading trade
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`group for U.S. wireless communication industry. Ex. 1002 at ¶¶45-46 (citing Ex.
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`1008 at 1). In fact, this prior art CTIA Guidelines document -- and its focus on
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`privacy concerns -- is explicitly discussed in the specification of the ’358 patent.
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`Ex. 1001, Col. 1, line 58-Col. 2, line 3. Mr. William’s agreed that a company
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`looking to follow the CTIA guidelines or the company’s own privacy policy would
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`have looked to provide notice to the users of its services. Ex. 1020 at 42:13-22,
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`43:19-44:16 and 61:1-5.
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`Therefore, all of the evidence in this proceeding, including testimony from
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`both parties experts, supports the finding that Poulin provides a notice to its users
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`and a POSITA would have reason to provide that notice via IVR.
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`9
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`B. No reliance on hindsight
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`Patent Owner’s hindsight arguments are misplaced. As just discussed, the
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`evidence showing that a POSITA would have been motivated to modify Poulin
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`does not rely on any disclosure from the ’358 patent.
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`Notwithstanding the lack of any reliance on the ’358 patent, Patent Owner
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`tries to manufacture hindsight by asserting that the prior art “does not suggest that
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`a lack of notice during the call was a problem to be solved at all. Instead, this
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`‘problem’ was first identified in the ’358 patent, and it is impermissible hindsight
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`to use the invention itself to supply the reason to modify the prior art.” PO Resp.
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`at 23. 3 This argument fails for a number of reasons.
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`First, it is belied by the evidence of the Petition showing that notice and
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`consent was a widely known issue relative to location based services prior to the
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`
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`3 It is questionable if this purported problem was identified by the ’358 patent at
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`all. The only problem identified in the ’358 patent is that, for existing web browser
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`and SMS solutions, “some of these systems proved inconvenient and may require
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`advanced mobile devices or extensive training.” Ex. 1001 at 4-8 (emphasis added).
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`This criticism is not directed to when the notice is provided (e.g., during a
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`telephone call) and does not even appear directed towards all web browser or SMS
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`systems given the fact the specification uses the word “some” and the claims
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`expressly recite using “an SMS message.” See e.g., Ex. 1001 at claims 5, 11, 16,
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`and 29.
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`10
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`
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`filing of the ’358 patent. Pet. at 8-9. Indeed, the ’358 patent acknowledges this
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`fact when it discusses the pre-existing industry guidelines as “provid[ing] a
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`framework based on two principles: user notice and consent.” Ex. 1001 at 1:52-
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`2:3; Ex. 1002 at ¶¶45-46 (citing to Ex. 1008); see also Ex. 1020 at 42:13-22 and
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`43:19-44:16. Moreover, IVR technology that could be used to transmit automatic
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`voice messages to provide notice and receive a signal indicating consent existed
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`well before the ’358 patent. Pet. at 9 (citing Ex. 1002 at 48-49, Ex. 1009 at 1:19-
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`28, and Ex. 1010 at [0033].); Ex. 1015 at ¶4; Ex. 1020 at 37:19-22, 65:6-66:8.
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`Perhaps most damning of all is that Poulin alone, which was filed a decade before
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`the ’358 patent, describes providing notice and consent with a suggestion to
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`implement it using IVR. Ex. 1002 at ¶¶64-69 and Ex. 1005 at ¶¶ [0002], [0022],
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`[0023], [0042], [0046] and [0067].
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`Second, even assuming the ’358 patent was the first to identify the problem
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`and solution of providing notice during a telephone call, the problem to be solved
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`is only one basis to find motivation. Patent Owner simply ignores the motivation
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`found in Poulin and the knowledge of one of skill in the art which are the basis of
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`motivation provided in the Petition. Sibia Neurosciences, 225 F.3d at 1356
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`(“suggestion or motivation may be derived from the prior art reference itself, from
`
`the knowledge of one of ordinary skill in the art, or from the nature of the problem
`
`to be solved”) (emphasis added); see also KSR 550 U.S. 398 at 415 (obviousness
`
`
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`11
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`
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`
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`determined based on “expansive and flexible approach”). In particular, Patent
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`Owner presents no argument for how following the teaching of Poulin, provided a
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`decade before the filing of the ’358 patent, or applying the knowledge of one of
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`skill in the art about notice, consent and IVR that pre-dates the ’358 could be
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`hindsight.
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`IV. CONCLUSION
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`In view of the foregoing, claims 1-30 of the ’358 patent are not patentable
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`and Petitioner requests that the Board issue an Final Determination finding claims
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`1-30 of the ’358 patent unpatentable.
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`
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`Date: August 31, 2018
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`POLSINELLI PC
`1000 Louisiana Street,
`Suite 6400
`Houston, Texas 77002
`P: 713-374-1600
`F: 713-374-1601
`
`
`Respectfully submitted,
`
`/James P. Murphy/
`
`
`
`POLSINELLI PC
`James P. Murphy
`Reg. No. 55,474
`Matthew Frontz
`Reg. No. 65,198
`Ryan Murphy
`Reg. No. 66,285
`
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`12
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`CERTIFICATE OF WORD COUNT
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`Petitioner certifies that the word count in this Reply to Patent Owner’s
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`
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`Response is 2,766 words, as counted by the word-processing program (Microsoft
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`Word 2010) used to generate this Petition, where such word count excludes the
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`table of contents, table of authorities, mandatory notices, certificate of service,
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`appendix of exhibits, and this certificate of word count. This Petition is in
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`compliance with the 5,600 word limit set forth in 37 C.F.R. § 42.24(c)(3).
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`
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`
`
`/Sabrina Alaniz/
`Sabrina Alaniz
`POLSINELLI PC
`1000 Louisiana, Sixty-Fourth Floor
`Houston, Texas 77002
`Tele: (713) 374-1600
`Fax: (713) 374-1601
`
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`13
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the accompanying Reply to
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`
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`Patent Owner’s Response, has been served on August 31, 2018 via email directed
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`to the following email addresses of record:
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`Mark Johnson
`mjohnson@rennerotto.com
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`Luis Carrion
`lcarrion@rennerotto.com
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`Kyle Fleming
`kfleming@rennerotto.com
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`
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`
`
`
`/Sabrina Alaniz/
`Sabrina Alaniz
`POLSINELLI PC
`1000 Louisiana, Sixty-Fourth Floor
`Houston, Texas 77002
`Tele: (713) 374-1600
`Fax: (713) 374-1601
`
`
`
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`14
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