UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
`
`
`TOMTOM, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
`
`_______________
`
`Case IPR2017-02025
`Patent 6,434,212
`
`_______________
`
`
`PATENT OWNER BLACKBIRD TECHNOLOGIES’
`PRELIMINARY RESPONSE
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`TABLE OF CONTENTS
`
`
`Introduction ....................................................................................................... 1
`I.
`II. Background ........................................................................................................ 2
`A. Related Proceedings Bearing on This Proceeding ......................................... 2
`B. About the ‘212 Patent ..................................................................................... 2
`C. Petitioner’s Grounds of Challenge ................................................................. 7
`D. Petitioner’s Proposed Claim Constructions ................................................... 8
`E. Level of Skill of a Person Having Ordinary Skill in the Art........................13
`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE
`THE PRIOR ART AND ARGUMENTs RELIED UPON HAVE
`BEEN CONSIDERED DURING PROSECUTION AND ARE
`THE SUBJECT OF OTHER IPRS. ....................................................................... 14
`IV. ARGUMENT: THERE IS NOT A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS OF THE
`‘212 PATENT ARE UNPATENTABLE. ............................................................. 21
`A. All Grounds: Petitioner Fails to Establish that Sham Discloses “a heart rate
`monitor joined to the strap.” .........................................................................21
`B. All Grounds: Petitioner Fails to Establish that Sham Discloses a
`“Transmitter” and a “Receiver” as Required by Claim 6. ...........................24
`C. Ground 1: Petitioner Fails to Establish that the Combination of Sham and
`Levi Disclose a Plurality of Calibrations. ....................................................26
`D. Ground 2: Petitioner Fails to Establish that the Combination of Sham and
`Ebeling Discloses Stride Rate to Stride Length Correspondence. ...............32
`V. ARGUMENT: PETITIONER ASSERTS INCOMPATIBLE
`REFERENCES AND DOES NOT SHOW A MOTIVATION TO
`COMBINE ............................................................................................................. 36
`A. The Levi Reference (U.S. Pat. No. 5,583,776) Concerns a Dead Reckoning
`Navigational System .....................................................................................36
`B. Ground 1: Petitioner Fails to Explain Why a PHOSITA Would Have Been
`Motivated to Combine Sham and Levi ........................................................38
`C. Ground 1: Petitioner Fails to Show that Its Secondary Reference (Levi) Is
`Analogous Art as Required. .........................................................................40
`1. Levi Is From a Different Field of Endeavor From the ‘212 Patent. ........41
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`2. Levi Pertains to Different Problems. ........................................................43
`VI. Conclusion ....................................................................................................... 46
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`
`
`Cases
`
`Cultec, Inc. v. Stormtech LLC,
`
`IPR2017-00777 (PTAB Aug. 22, 2017) ............................................... 16, 19
`
`In re Kahn,
`
`441 F.3d 977 (Fed. Cir. 2006) ......................................................................41
`
`In re Oetiker,
`
`977 F.2d 1443 (Fed. Cir. 1992) ............................................................. 41, 45
`
`Jiawei Tech. (HK) Ltd. v. Richmond,
`
`IPR2014-00937, Paper 22 (P.T.A.B. Dec. 16, 2014) ...................................12
`
`Jiawei Tech. (HK) Ltd. v. Richmond,
`
`IPR2014-00937, Paper 24 (P.T.A.B. Feb. 6, 2015) .....................................12
`
`K-TEC, Inc. v. Vita-Mix Corp.,
`
`696 F.3d 1364 (Fed. Cir. 2012) ............................................................. 41, 43
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) ...................................................................... 9
`
`Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, Case No.
`
`IPR2016-00386 (PTAB Aug. 11, 2016) ........................................................ 9
`
`Schott Gemtron Corp. v. SSW Holding Co.,
`
`IPR2014-000358, (PTAB August 20, 2014) ......................................... 40, 45
`
`Unified Patents, Inc. v. Berman,
`
`IPR2016-01571 (PTAB Dec. 14, 2016) ................................................ 15, 19
`
`Statutes
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`35 U.S.C. § 314(a) ........................................................................................ 1, 21, 46
`
`35 U.S.C. § 325(d) ................................................................................ 15, 16, 20, 21
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`Regulations
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`37 C.F.R. § 42.104(b)(3)-(4) ....................................................................................12
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`37 C.F.R. § 42.8(b)(2) ................................................................................................ 2
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`I.
`
`INTRODUCTION
`The Petition for inter partes review of U.S. Patent No. 6,434,212 (“the ‘212
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`Patent”) should be denied and no trial instituted because there is no “reasonable
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`likelihood” that Petitioner TomTom, Inc. (“TomTom” or “Petitioner”) would
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`prevail with respect to at least one of the challenged claims. 35 U.S.C. § 314(a).
`
`Petitioner challenges the claims of the ‘212 Patent on two obviousness
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`grounds. However, the prior art and arguments Petitioner relies upon have already
`
`been considered by this Office on numerous occasions. U.S. Pat. 5,891,042 to
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`Sham et al. (“Sham”) was the primary reference the Examiner and Applicant dealt
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`with during prosecution. There, the Examiner put forth, and the Applicant
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`eventually overcame, arguments based on Sham that mirror those TomTom now
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`asks the Board to revisit. But TomTom presents no good reason why the Board
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`should undertake this duplicative exercise, and the Board should exercise its
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`discretion and decline to do so.
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`Further, the prior art combinations do not teach all of the elements of the
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`challenged claims of the ‘212 Patent. Specifically, Petitioner’s references do not
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`disclose or suggest the “transmitter” and “receiver” elements of claim 6, and do not
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`teach an algorithm that correlates stride rate to stride length as claimed in the ‘212
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`Patent. Additionally, Petitioner also fails to present legally-sound reasons why a
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`PHOSITA would have been motivated to combine the asserted prior art in the first
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`place, instead relying on conclusory statements and the assumptions of its expert.
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`For at least these reasons, the Petition is groundless, and should be denied in its
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`entirety.
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`II. BACKGROUND
`A. Related Proceedings Bearing on This Proceeding1
`In addition to the instant matter, the ’212 patent is the subject of four other
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`inter partes review (“IPR”):
`
`IPR2017-01058 filed by Garmin International, Inc. now terminated;
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`IPR2017-02012, filed by Fitbit, Inc.;
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`IPR2018-02023 filed by Petitioner; and
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`IRP2018-00275 filed by Wahoo Fitness LLC.
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`Notably, in this petition, the petitioner provides no explanation for why the Board
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`should permit multiple repetitive and redundant challenges, separated by as much
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`as five to six months, against common claims of the ’212 patent.
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`B. About the ‘212 Patent
`The ‘212 Patent describes and claims an improved exercise monitoring
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`device that tracks a user’s activity, and reports key fitness metrics back to the user.
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`
`
` 1
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` A complete list of the related matters is contained in Patent Owner’s Mandatory
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`Notices per 37 C.F.R. § 42.8(b)(2).
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`(See generally, ‘212 Patent, “Summary of the Invention”). The device includes a
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`pedometer, which is a portable electromechanical device for determining the
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`distance a person travels on foot. (‘212 Patent, 1:17-18). The inventions claimed
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`in the ‘212 Patent were born out of the inventor’s research into ways of solving
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`problems with prior art pedometers. (Id. at 2:8-11). At the time of invention in
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`1998, prior art pedometers were overly complex devices that produced inaccurate
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`distance determinations. (Id.). Complexity and inaccuracy are serious problems
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`because they tend to defeat the purpose of the pedometer’s inclusion in an exercise
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`monitoring device, which is to provide a wearable device that informs the user of
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`the distance he or she has walked or run while exercising. (Id. at 1:12-18).
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`The background section of the ‘212 Patent surveys half a dozen prior art
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`pedometers. (Id. at 1:19-2:7). This survey shows that, at the time of invention,
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`prior art pedometers consisted of a variety of different structural components and
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`configurations, different distance determination
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`techniques, and different
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`calibration procedures (if any). (Id.). For example, the ‘212 Patent first describes
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`a complex and inaccurate design with at least three separate components: a pair of
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`leg-mounted ultrasonic modules and a wrist-mounted display. (Id. at 1:19-27). In
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`this design, distance is determined by directly measuring the length of each stride,
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`which is measured by passing sound waves between the ultrasonic modules worn
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`on a user’s legs. (Id.). This design involves “a variety of measurement errors.”
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`(Id.). Because stride length is measured directly, no calibration is required. (See
`
`id.).
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`The ‘212 Patent next describes another complex and inaccurate design with
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`a heel-mounted device and stay-at-home computer. (Id. at 1:28-46). In this design,
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`distance is determined based on the length of time each stride lasts. (Id.). This
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`design involves an overly complex calibration process and produces “inherent
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`errors.” (Id.). Also, this design uses a stay-at-home computer, detachably
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`connected to the heel-mounted device by cabling, to determine distance. (Id.).
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`This device cannot provide users with real-time distance determinations, and users
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`do not know how far they walked or ran until returning home. (Id.).
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`The ‘212 Patent describes several more prior art pedometers. In at least
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`three such designs, distance determinations are inaccurate because they rely on a
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`single, fixed stride length. (Id. at 1:47-2:2). The reliance on a single, fixed stride
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`length is problematic in exercise monitoring because, in real life, stride length
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`varies with speed (or stride rate). Running strides are longer than walking strides.
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`(Id. at 1:54-55). Thus, a single, fixed stride length may underestimate or
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`overestimate distance travelled depending on how quickly or slowly the user is
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`moving his legs back and forth. (Id.). As a result, these designs require complex
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`calibration process that must be repeated whenever the user switches from walking
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`to running, or vice versa. (Id. at 1:63-65). In still another prior art design
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`described in the ‘212 Patent, stride rates are used not to determine the user’s
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`distance at all, but rather the user’s pace (e.g. minutes per mile). (Id. at 2:3-7).
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`To overcome the problems of complexity and inaccuracy, the inventor
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`conceived of a novel pedometer that reduces design complexity, increased distance
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`calculation accuracy, and improves calibration efficiency. (Id. at 2:15-26). This
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`invention is reflected, for instance, in claim 6 of the ‘212 Patent:
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`6. A pedometer comprising:
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`a step counter;
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`a transmitter in communication with the step counter to generate a step
`count signal corresponding to each step and transmit the step count
`signal;
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`a receiver mountable on a user body portion to receive the step count
`signal transmitted from the transmitter; and
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`a data processor programmed to calculate a distance traveled by
`multiplying a number of steps counted by a stride length that varies
`according to a rate at which steps are taken, and further
`programmed to derive an actual stride length from a range of stride
`lengths calculated from a range of corresponding stride rates.
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`(Id., claim 6). The step counter is configured to count the number of steps the user
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`takes. (Id. at 3:7-8). A transmitter, in communication with the step counter, is
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`configured to generate a step count signal corresponding to each step. The
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`transmitter is also configured to transmit the step count signal to a receiver, which
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`in turn is mountable on a user body portion. The pedometer also includes a data
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`processor that is programmed to determine the distance travelled by multiplying
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`the step count by a stride length (as opposed to, for example, directly measuring
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`stride length).
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`Although claim 6 of the ‘212 Patent recites the fact that stride length varies
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`according to stride rate, the claim does not stop there. It recites a programmatic
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`mechanism that allows a pedometer to leverage the fact that stride length varies
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`according to stride rate. Specifically, the data processor must derive the stride
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`length used to make the distance determination from a range of stride lengths.
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`These stride lengths are, in turn, calculated from a range of stride rates (i.e.,
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`number of strides over some period of time).
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`Remaining independent claims 1, 2, and 5 of the ‘212 Patent expand on
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`claim 6 in several ways. They each claim a strap-mounted device “for releasably
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`securing the exercise monitoring device to a user[.]” Claims 1, 2, and 5 also recite
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`a heart rate monitor joined to the same strap as the step counter. Claims 2 and 5
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`specifically recite a calibratable pedometer in which the data processor is
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`programmed to select a stride length “with reference to a plurality of calibrations
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`that each calculate a stride length as a function of a known stride rate,” as in claim
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`2, or “from a range of stride lengths calculated from a range of corresponding
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`stride rates calculated from a plurality of calibration samples,” as in claim 5. These
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`calibration features allow for the selection of a stride length to be used in the
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`distance calculation that more closely matches the user’s actual stride length,
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`which as a result makes the distance calculation more accurate.
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`The ‘212 Patent describes significant advantages of the claimed inventions
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`over prior art pedometers. It explains that, with the claimed pedometers, unlike
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`prior art pedometers, repeated calibrations are not required (absent significant
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`fitness improvements):
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`This third option for calculating stride length, and subsequently
`distance, speed, and pace, is a far more accurate method than a fixed
`stride length pedometer. This device and method are also practical,
`convenient, and has a relatively low manufacturing cost…. If there
`are no significant improvements in time, then recalibration is not
`necessary.
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`(‘212 Patent, 6:10-19 (emphasis added)). In short, the claimed exercise monitoring
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`devices provided significant advantages for both manufacturers and users.
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`Petitioner’s Grounds of Challenge
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`C.
`Petitioner proposes two grounds of challenge for all eight of the claims in
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`the ‘212 Patent in this petition (See, e.g., Pet. at 4-5). All grounds of challenge are
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`obviousness grounds. (Id.). The proposed grounds of challenge are as follows:
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`No. Ground
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`Claims
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`
`No. Ground
`1
`Section 103:
`U.S. Pat. No. 5,891,042 to Sham et al. (“Sham”) +
`US Pat. No. 5,583,776 to Levi et al. (“Levi”)
`Section 103:
`U.S. Pat. No. 5,891,042 to Sham et al. (“Sham”) +
`US Pat. No. 6,145,389 to Ebeling et al. (“Ebeling”)
`
`2
`
`Claims
`All
`
`All
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`Throughout this Preliminary Response, for ease of understanding, the Patent
`
`Owner will refer to these prior art references by the inventor names indicated
`
`above.2
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`Petitioner’s Proposed Claim Constructions
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`D.
`Petitioners’ assertion that the “terms of claims 1-8 of the ‘212 Patent are to
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`be given their “broadest reasonable construction” in this IPR is incorrect. (Pet. at
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`13). As contemporaneously filed petition IRP2017-02012 correctly points out, the
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`‘212 Patent claims priority to an application filed October 28, 1998, and therefore
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`is set to expire on October 28, 2018, less than a year from now and fewer than 14
`
`months from the filing of TomTom’s petition. Thus, it is unlikely that the Board
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`
`
` 2
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` Patent Owner reserves its right to present further argument and evidence related
`to these prior art references and the content of the Petition and supporting Exhibits
`later in this proceeding, consistent with the Board’s rules and practices. No waiver
`is intended by any argument withheld by Patent Owner at this preliminary stage.
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`will issue a final determination in this IPR prior to the expiration of the ‘212
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`Patent, given that IPR proceedings generally take 18 months to complete.
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`Therefore, the Board should not apply a “broadest reasonable construction”
`
`standard to the claims of the ‘212 Patent, but rather should construe the claims
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`under the Phillips standard. Samsung Elecs. Co. v. Elm 3DS Innovations, LLC,
`
`Case No. IPR2016-00386, slip op. at 2 (PTAB Aug. 11, 2016) (Paper 28). Under
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`this standard, claims are “generally given their ordinary and custom meaning” as
`
`understood by one of ordinary skill in the art at the time of the invention, in light of
`
`the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).
`
`This is not an academic matter in this IPR. In the related District Court
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`litigation, claim construction proceedings are well underway, and Petitioner has
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`advocated for claim constructions for several relevant claims terms in the ‘212
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`Patent, while Blackbird has proposed its own constructions. The District Court, of
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`course, will apply the Philips claim construction standard that should be applicable
`
`here. Under this standard, TomTom’s proposed claim constructions in the District
`
`Court should also apply here. 3 Those proposed constructions by both parties are:
`
`
`
` 3
`
` The District Court cases are currently stayed prior to the Markman hearing, but
`could resume prior to completion of this IPR. The District Court cases were stayed
`after the institution of IPR2017-01058, by Garmin International, who was a related
`defendant in these matters. The Garmin IPR has since been terminated (id.at Paper
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`9
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`
`“a step counter” (claims 2, 5, and 6)
`Blackbird Proposed
`TomTom’s Proposed
`Construction
`Construction
`“a device that collects data to generate
`“a device mounted to the chest, waist, or
`a step count”
`leg that counts the number of steps a
`user takes”
`
`
`
`“stride rate” (claims 2, 5, and 6) 4
`Blackbird Proposed Construction
`TomTom’s Proposed Construction
`“strides or steps per unit time”
`“strides or steps per unit of time”
`
`“a stride length that varies according to the rate at which steps are taken”
`(claim 6); “…according to a stride rate” (claim 2); “…according to a rate at
`which steps are counted” (claim 5)
`Blackbird Proposed Construction
`TomTom’s Proposed Construction
`the stride length variation cannot only be
`plain and ordinary meaning
`between a uniform running stride length
`and a uniform walking stride length
`
`
`“from a range of stride lengths calculated from a range of corresponding
`stride rates” (claim 6)
`TomTom’s
`Related Defendant Timex’s
`Proposal
`Proposed Construction
`(no proposed
`“the output of an algorithm that
`construction)
`uses input data from calibration
`samples that include at least a
`
`normal pace sample, a faster than
`normal pace sample, and a slower
`than normal pace sample”
`
`Blackbird Proposed
`Construction
`“from a range of stride
`lengths that correspond to
`stride rates, the
`correspondence generated
`from two or more
`calibrations”
`
`
`
`11), and the District Court cases are therefore clear to resume.
`4 In its Responsive Claim Construction Brief, Blackbird agreed with and adopted
`TomTom’s proposed construction for this term.
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`
`In its Petition, TomTom, applying a “broadest reasonable construction”
`
`standard, does not actually propose constructions for the Board to apply to its
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`Petition. (Pet. at 13-15). Instead, TomTom lists Blackbird’s proposed District
`
`Court construction for the terms “step counter” and “from a range of stride lengths
`
`calculated from a range of corresponding stride rates,” and Blackbird’s former
`
`claim construction position for the term “stride rate.” Thus, it appears that
`
`TomTom concedes that Blackbird’s proposed District Court constructions (under
`
`the Philips standard) fall within the broadest reasonable constructions for these
`
`terms, and suggests that the Board apply those constructions. Notably, TomTom
`
`fails to provide any analysis or discussion applying the Philips-standard claim
`
`constructions that it proposed in District Court. TomTom’s failure to acknowledge
`
`the correct claim construction standard, or any of its proposals under that standard,
`
`puts its Petition on shaky footing from the start.
`
`Additionally, TomTom urges the board to adopt Blackbird’s proposed
`
`(Philips-style) claim construction for the term “from a range of stride lengths
`
`calculated from a range of corresponding stride lengths.” But, again, TomTom
`
`does not address its own actions at District Court and again purports to apply the
`
`“broadest reasonable construction” standard. At the District Court, however,
`
`TomTom did not propose a construction for this term, contending that no
`
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`construction was necessary.5
`
`TomTom’s claim construction positions here are at odds with its positions in
`
`the District Court, although the same claim construction standard should apply in
`
`both proceedings. These actions by TomTom represent a failure to comply with 37
`
`C.F.R. § 42.104(b)(3)-(4), which states: “[i]t is Petitioner’s burden to explain how
`
`the challenged claims are to be construed and how they read on the prior art.” That
`
`failure is grounds for the Board to deny institution of TomTom’s Petition. See
`
`Jiawei Tech. (HK) Ltd. v. Richmond, IPR2014-00937, Paper 22, slip op. at 7-9
`
`(P.T.A.B. Dec. 16, 2014) (denying institution for failing to construe a term); Id.,
`
`Paper 24, slip op. at 2 (P.T.A.B. Feb. 6, 2015) (denying request for rehearing of
`
`Board’s denial of review premised on “Petitioner’s failure to offer a construction
`
`and analysis of a term critical to understanding the scope of [the challenged]
`
`claims”).6
`
`
`
` 5
`
` A related defendant in the District Court litigation, Timex, advocated for this
`term. Timex is not a party to this, or any IPR addressing the ‘212 patent.
`6 TomTom’s treatment of the claim terms “a stride length that varies according to
`the rate at which steps are taken” (claim 6); “…according to a stride rate” (claim
`2); “…according to a rate at which steps are counted” (claim 5) are equally flawed.
`For those terms, TomTom advocates for a limiting Philips-style construction at the
`District Court, but does not contend that the terms require construction in this IPR.
`Either the claim terms require a construction or they don’t.
`
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`
`Blackbird believes
`
`that
`
`the Board should apply Philips-standard
`
`constructions to the disputed terms of the ‘212 Patent for purposes of this petition.
`
`Because the ‘212 Patent is set to expire before the conclusion of this IPR,
`
`Blackbird will not have any opportunity to amend claims, and therefore the
`
`prosecution-focused “broadest reasonable construction” standard is inappropriate.
`
`Blackbird submits that the correct constructions for the disputed terms are the
`
`constructions Blackbird has put forth at the District Court, as listed above. For
`
`completeness, however, Blackbird will address both its proposed constructions and
`
`TomTom’s proposed District Court constructions, where appropriate.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
`
`E.
`Petitioner offers two alternative sets of qualifications for a person having
`
`ordinary skill in the art:
`
`A person having ordinary skill in the art (PHOSITA) of the ’212
`patent as of October 1998 would have been a [1] person with a
`bachelor’s degree in mechanical engineering, electrical engineering,
`or a similar field with at least two years of experience in motion
`tracking, motion analysis, inertial sensing, or signal analysis or [2] a
`person with a master’s degree in mechanical engineering, electrical
`engineering, or a similar field with a specialization in motion tracking,
`motion analysis, inertial sensing, or signal analysis.
`
`(Pet. at 16). For the purposes of this inter partes review, Patent Owner agrees with
`
`this formulation for a person having ordinary skill in the art.
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`13
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`
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`One aspect of these qualifications of a skilled artisan warrants heightened
`
`emphasis. Although degrees in electrical engineering or mechanical engineering
`
`are broadly applicable, the specific experience (i.e., motion tracking, motion
`
`analysis, inertial sensing, or signal analysis) of one having ordinary skill in the art
`
`is related to the field of exercise monitoring. Indeed, Petitioner’s expert, Dr.
`
`Blackadar, emphasizes his own experience with “sensor systems for collecting and
`
`analyzing data relating to an individual’s physiological state” and publications
`
`relating to “topics in the field of collecting and analyzing data relating to an
`
`individual’s physiological state[.]” (Pet. EX. 1005 at 2-4). This is expected, since
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`the ‘212 Patent claims an exercise monitoring device.
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`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PRIOR ART AND ARGUMENTS RELIED UPON HAVE BEEN
`CONSIDERED DURING PROSECUTION AND ARE THE SUBJECT OF
`OTHER IPRS.
`
`TomTom’s Petition sets forth two obviousness grounds, asserting a total of
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`three references. Two out of those three references (Sham and Levi) are cited on
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`the face of the ‘212 Patent and were before the patent examiner during prosecution.
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`The third (Ebeling) is used only as a secondary reference in Ground 2, but this lone
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`uncited reference is used for the same claim elements as Levi, in Ground 1, making
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`Ground 2, and the Ebeling reference, redundant of Ground 1. Ebeling is also
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`substantially similar to other references expressly considered during prosecution of
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`the ’212 Patent and its parent. Also, as mentioned with regard to the related
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`proceeding infra I.A., five petitions have been filed against the ‘212 patent,
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`creating redundancies and unnecessary burden for the Board and Patent Owner.
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`“In determining whether to institute or order a proceeding . . . the Director
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`may take into account whether, and reject the petition or request because, the same
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`or substantially the same prior art or arguments previously were presented to the
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`Office.” 35 U.S.C. § 325(d). Two recent decisions, designated by the Board as
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`informative, confirm the importance of conserving Board resources and denying
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`challenges that are repetitive or cumulative of arguments already deemed
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`unpersuasive by the examiner.
`
`In Unified Patents, Inc. v. Berman, IPR2016-01571 (PTAB Dec. 14, 2016)
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`(Paper 10), the Board denied institution on an obviousness challenge where the
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`references advanced were also before the examiner during prosecution, or were
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`cumulative of such references. Here, as in Unified Patents, despite the Petitioner’s
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`use of the same, or substantially the same, prior art and arguments presented
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`previously to the Office, Petitioner “fails to present any argument to distinguish the
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`Examiner’s prior consideration of [the previously considered reference] or to
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`provide a compelling reason why the Board should readjudicate substantially the
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`same prior art and argument as those presented during prosecution and considered
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`by the Examiner.” Id. at 12. In Unified Patents, the Board held that reconsidering
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`IPR2017-02025 – Patent Owner’s Preliminary Response
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`the art like that submitted in TomTom’s Petition “would not be an efficient use of
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`Board resources” and the Board “exercise[d] [its] discretion and decline to
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`institute” the Petition. Id.
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`Similarly, in Cultec, Inc. v. Stormtech LLC, IPR2017-00777 (PTAB Aug.
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`22, 2017) (Paper 7), the Board agreed that a reference that was applied in a related
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`application and cited in the patent-at-issue also implicated § 325(d). There, as in
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`this Petition, a single reference, Cobb, formed the primary basis for all grounds
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`asserted in the Petition. There, the Cobb reference, like the Sham reference upon
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`which TomTom relies, was submitted during prosecution of the patent-at-issue,
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`and extensively argued in a related application. Significantly, in the Cultec case,
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`the petitioner submitted several additional references that were not cited during
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`prosecution of the patent-at-issue. The Board examined those references and found
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`them to be cumulative of others that were before the Examiner during prosecution.
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`Id. at 12 (“We conclude that the disclosure relied upon in [the uncited reference] of
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`discontinuous grooves is substantially the same as the discontinuous slots in [a
`
`cited reference], previously presented”). Likewise here, although the Ebeling
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`reference is not cited on the face of the ‘212 Patent, its disclosures are duplicative
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`of, and used in the same ways as, references that were before the Examiner. Like
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`the Board concluded in Cultec, the Board should decline to institute TomTom’s
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`redundant Petition.
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`

`IPR2017-02025 – Patent Owner’s Preliminary Response
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`
`TomTom’s Ground 1 relies entirely upon references that were before the
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`Examiner during the entirety of the examination of the applications that lead to the
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`‘212 Patent and its parent, U.S. Patent No. 6,175,608 (the “’608 Patent). Levi,
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`TomTom’s secondary reference for Ground 1, was submitted by the Applicant
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`during prosecution of the ‘608 Patent, in an Information Disclosure Statement
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`(“IDS”) received by the Patent Office on December 22, 1999. (Ex. 1010 at 59).
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`Levi, the only reference submitted in that IDS, was initialed by the Examiner, who
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`indicated the “Date Considered” for Levi was January 24, 2000. (Id. at 63). Four
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`days later, on January 28, 2000, the Examiner issued her first Office Action, in
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`which she rejected several pending claims as anticipated or rendered obvious by
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`Sham. (Id. at 67-69). That the Examiner did not mention Levi or include it in any
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`prior art combinations, despite having it fresh in her mind, is telling, and suggests
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`that she did not consider Levi’s “dead reckoning system” to be particularly
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`relevant (See Section V.A, below). The Examiner further indicated that several
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`pending claims, including claims with limitations similar to those at issue in this
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`Petition, were allowable over Sham. (Ex. 1010 at 69).7
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`
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`7 Subsequently, during prosecution of the ‘212 Patent, the same Examiner
`rejected a single claim as anticipated by Sham, but allowed the other claims in the
`appli