`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`GOOGLE INC.,
`Petitioner,
`v.
`ALEX IS THE BEST, LLC
`Patent Owner
`______________________________
`Case IPR2017-02056
`U.S. Patent No. 8,134,600
`______________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`Page No.
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`I.
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`INTRODUCTION AND SUMMARY OF ARGUMENT ...................................................... iv
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`II. INTER PARTES REVIEW IS UNCONSTITUTIONAL ........................................................ 3
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`III. PATENT OWNER IS ENTITLED TO EFFECTIVE FILING DATE OF JULY 26, 2005 ..... 4
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`IV. THE PETITION FAILS TO ESTABLISH A REASONABLE LIKELIHOOD AT LEAST
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE .......................................... 5
`
`A. The Petition Fails to Establish a Motivation to Combine for Obvious Grounds ................ 7
`
`1. The Petition fails to provide a satisfactory motivation to combine Nicholas and Nair
`(Ground 2) .........................................................................................................................8
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`2. The Petition fails to provide a satisfactory motivation to combine Nicholas and Kusaka
`(Ground 3) .........................................................................................................................9
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`3. The Petition fails to provide a satisfactory motivation to combine Nicholas and
`Khedouri (Ground 4)....................................................................................................... 11
`
`4. The Petition fails to provide a satisfactory motivation to combine Nicholas and Morris
`(Ground 5) .......................................................................................................................12
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`5. The Petition fails to provide a satisfactory motivation to combine Inoue and Nair
`(Ground 6) .......................................................................................................................13
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`6. The Petition fails to provide a satisfactory motivation to combine Inoue, Nair and
`Narayanaswami (Ground 7) ............................................................................................15
`
`7. The Petition fails to provide a satisfactory motivation to combine Umeda and Inoue
`(Ground 8) .......................................................................................................................17
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`8. The Petition fails to provide a satisfactory motivation to combine Umeda, Inoue and
`Kusaka (Ground 9) ..........................................................................................................19
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`9. The Petition fails to provide a satisfactory motivation to combine Umeda, Inoue and
`Khedouri (Ground 10).....................................................................................................21
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`10. The Petition fails to provide a satisfactory motivation to combine Umeda, Inoue and
`Morris (Ground 11) .........................................................................................................22
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`B. Ground 1: The Petition Fails to Establish That Claims 1-5, 8 and 9 are Anticipated by
`Nicholas ............................................................................................................................ 24
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`1. The Petition Relies on a Reference that Teaches Away from the Claimed Invention .....24
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`C. Ground 2: The Petition Fails to Establish a Reasonable Likelihood That Claims 10, 12
`and 13 are Rendered Obvious in view of Nicholas and Nair ............................................ 25
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`D. Ground 3: The Petition Fails to Establish a Reasonable Likelihood That Claims 10, 12
`and 13 are Rendered Obvious in view of Nicholas and Kusaka ....................................... 26
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`E. Ground 4: The Petition Fails to Establish a Reasonable Likelihood That Claim 10 is
`Rendered Obvious in view of Nicholas and Khedouri ..................................................... 26
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`F. Ground 5: The Petition Fails to Establish a Reasonable Likelihood That Claims 12 and 13
`are Rendered Obvious in view of Nicholas and Morris .................................................... 27
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`G. Ground 6: The Petition Fails to Establish a Reasonable Likelihood That Claims 1-5, 8-10,
`12 and 13 are Rendered Obvious in view of Inoue and Nair ............................................ 27
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`H. Ground 7: The Petition Fails to Establish a Reasonable Likelihood That Claim 2 is
`Rendered Obvious in view of Inoue, Nair and Narayanaswami ....................................... 29
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`I. Ground 8: The Petition Fails to Establish a Reasonable Likelihood That Claims 1-5, 8 and
`9 are Rendered Obvious in view of Umeda and Inoue ..................................................... 30
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`J. Ground 9: The Petition Fails to Establish a Reasonable Likelihood That Claim 10 is
`Rendered Obvious in view of Umeda, Inoue and Kusaka ................................................ 31
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`K. Ground 10: The Petition Fails to Establish a Reasonable Likelihood That Claim 10 is
`Rendered Obvious in view of Umeda, Inoue and Khedouri ............................................. 32
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`L. Ground 11: The Petition Fails to Establish a Reasonable Likelihood That Claims 12 and
`13 are Rendered Obvious in view of Umeda, Inoue and Morris ...................................... 32
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`V. CONCLUSION ..................................................................................................................... 34
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`
`TABLE OF AUTHORITIES
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`Page No.
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`Cases
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`Ex Parte Ahlfeld, APPEAL 2014-009272, 2016 WL 4775709
`(P.T.A.B. Sept. 9, 2016) ........................................................................................................... 7
`
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) ............................................ 7
`
`Jacobs Corp. v. Generis III, Inc., IP2014-01267, Paper 12
`(P.T.A.B. Jan. 22, 2015) .......................................................................................................... 7
`
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012) ........................ 7
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ...................................................................... 7
`
`MaCormick Harvesting Mach. Co. v. Aultman & Co., 169 U.S. 606 (1898) …...………………. 4
`
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014) ......................................................................................................... 7
`
`
`Oil States Energy Services LLC v. Greene’s Energy Group, LLC. ……..………………………... 4
`
`Purdue Pharma L.P. v. Depomed, Inc., 643 F. App’x 960 (Fed. Cir. 2016) ................................. 8
`
`Other Authorities
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`37 C.F.R. §42.108(c) ...................................................................................................................... 7
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`iii
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`
`EXHIBIT LIST
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`Ex. No.
`
`
`
`2001
`
`
`
`
`
`
`Brief Description
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`IPR2017-02058, Petition
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`iv
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`
`I.
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`INTRODUCTION AND SUMMARY OF ARGUMENT
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`Petitioner has requested initiation of inter partes review (the “Petition”) of claims 1-5, 8-
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`10, 12 and 13 (the “Challenged Claims”) of U.S. Patent 8,134,600 (hereinafter the ‘600 patent or
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`AITB patent) issued to Alex Is The Best, LLC (“Patent Owner” or “AITB”). AITB respectfully
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`requests that the Board deny the Petition for at least the following reasons:
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`First, inter partes review is unconstitutional.
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`Second, Petitioner fails to establish why a person of ordinary skill in the art would have
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`combined Nicholas with either Nair, Kusaka, Khedouri or Morris (Grounds 2-5) and therefore
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`fails to establish a reasonable likelihood that Petitioner would prevail on any obviousness
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`ground. Petitioner’s proffered obviousness combinations involving Nicholas must fail because
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`Nicholas teaches away from the claimed invention.
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`Third, Petitioner fails to establish why a person of ordinary skill in the art would have
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`combined Inoue with either Nair or with Nair and Narayanaswami (Grounds 6-7) and therefore
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`fails to establish a reasonable likelihood that Petitioner would prevail on any obviousness
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`ground. Petitioner’s proffered obviousness combinations involving Inoue must fail because such
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`combinations will not lead a person of ordinary skill in the art to the claimed invention because
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`Inoue’s camera establishes a network connection on power-up only when a communication card
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`is installed in the card slot. Inoue’s card slot can (a) be empty, (b) have a communication card, or
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`(c) have a memory card.
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`Fourth, Petitioner fails to establish why a person of ordinary skill in the art would have
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`combined Umeda with either (1) Inoue, (2) Inoue and Kusaka, (3) Inoue and Khedouri or (4)
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`Inoue and Morris (Grounds 8-11) and therefore fails to establish a reasonable likelihood that
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`Petitioner would prevail on any obviousness ground. Petitioner’s proffered obviousness
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`1
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`combinations involving Umeda must fail because such combinations will not lead a person of
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`ordinary skill in the art to the claimed invention because “seamless routing between wireless
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`networks” during roaming as taught by Umeda is achieved only when both wireless networks
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`are simultaneously present and available. Whereas, the claimed invention automatically
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`switches to another available mode of connection when the primary mode of connection to the
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`communications network is unavailable.
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`Fifth, Petitioner fails to establish a reasonable likelihood of success that Claims 1-5, 8
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`and 9 are anticipated by Nicholas (Ground 1) because the Petitioner relies on a personal
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`computer (PC) reference which was taught against by the Patent Owner.
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`Sixth, Petitioner fails to establish a reasonable likelihood of success that Claims 10, 12
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`and 13 are obvious in view of Nicholas combined with either Nair or Kusaka (Grounds 2-3);
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`Claim 10 is obvious in view of Nicholas combined with Khedouri (Ground 4); and Claims 12
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`and 13 are obvious in view Nicholas combined with Morris (Ground 5). These combinations
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`involving Nicholas must fail because Nicholas teaches away from the claimed invention. Also,
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`these combinations must fail because “seamless routing between wireless networks” during
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`roaming as taught by Nair is achieved only when both wireless networks are simultaneously
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`present and available. Whereas, the claimed invention automatically switches to another
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`available mode of connection when the primary mode of connection to the communications
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`network is unavailable.
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`Seventh, Petitioner fails to establish a reasonable likelihood of success that Claims 1-5,
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`8-19, 12 and 13 are obvious in view of Inoue and Nair (Ground 6); and Claims 2 is obvious in
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`view of Inoue, Nair and Narayanaswami (Ground 7). These combinations fail to teach or suggest
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`that “the Internet direct device automatically switches to another available mode of connection
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`
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`2
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`when the Internet direct device detects that the primary mode of connection to the
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`communications network is unavailable.” Nair merely describes providing seamless routing
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`between wireless network while the cell phone user is roaming, i.e., when both wireless
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`networks are simultaneously present and available when “handoff” or switch is made from one
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`wireless network to another wireless network, and Inoue’s camera establishes a network
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`connection on power-up only when a communication card is installed in the card slot. Inoue’s
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`card slot can (a) be empty, (b) have a communication card, or (c) have a memory card.
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`Narayanaswami is merely cumulative and adds nothing to the combined teachings of Inoue and
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`Nair.
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`Eight, Petitioner fails to establish a reasonable likelihood of success that Claims 1-5, 8
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`and 9 are obvious in view of Umeda and Inoue (Ground 8); Claims 10, 12 and 13 are obvious in
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`view of Umeda, Inoue and Kusaka (Ground 9); Claim 10 is obvious in view Umeda, Inoue and
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`Khedouri (Ground 10); and Claims 12 and 13 are obvious in view Umeda, Inoue and Morris
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`(Ground 11). These combinations involving Umeda must fail because “seamless routing between
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`wireless networks” during roaming as taught by Umeda is achieved only when both wireless
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`networks are simultaneously present and available. Whereas,
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`the claimed
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`invention
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`automatically switches to another available mode of connection when the primary mode of
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`connection to the communications network is unavailable.
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`II.
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`INTER PARTES REVIEW IS UNCONSTITUTIONAL
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`Patent Owner believes any attempt to retract Patent Owner’s intellectual property rights
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`through invalidation of any claims of the AITB patent at the United States Patent and Trademark
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`Office is unconstitutional. In particular, the IPR process at least violates the Constitution by
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`extinguishing private property rights through a non-Article III forum without a jury. Once a
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`3
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`patent is granted, it “is not subject to be revoked or canceled by the president, or any other
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`officer of the Government” because “[i]t has become the property of the patentee, and as such is
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`entitled to the same legal protection as other property.” McCormick Harvesting Mach. Co. v.
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`Aultman & Co., 169 U.S. 606 (1898). The Supreme Court has recently granted certiorari on this
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`issue in Oil States Energy Services LLC v. Greene’s Energy Group, LLC. Patent Owner reserves
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`all rights in the event the PTAB invalidates any claims of the subject Patent in this proceeding.
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`III.
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`PATENT OWNER IS ENTITLED TO EFFECTIVE FILING DATE OF JULY 26,
`2005
`
`The Petitioner asserts that the Patent Owner is not entitled to the benefit of the earlier
`
`filing date U.S. Provisional Application Serial No. 60/702,470 (Ex. 1002, the “Provisional”)
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`because the Provisional allegedly does not describe the following two elements of independent
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`Claim 1 of the AITB patent:
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`(a) Internet direct device “automatically connects to said communications
`network on power-up using one of a plurality of available modes of connection”
`using a primary mode of connection and (b) “automatically switches to another
`available mode of connection when … said primary mode of connection to said
`communications network is unavailable.”
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`Petition at 9. The Patent Owner disagrees with the Petitioner’s erroneous assertion. Support for
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`these two allegedly unsupported claimed elements are at least as follows:
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`“An Internet Direct Camera (IDC) that transmits video only or video and audio
`directly to the internet (without any intermediate hardware) to a website.” (Ex.
`1002, Provisional at 1, lines 2-4).
`“My invention allows total portability and instant setup anywhere, at any time,
`where there is internet access.” (Ex. 1002, Provisional at 4, lines 13-14).
`“[Internet direct] camera has imbedded cell phone or portable cell phone antenna
`unit that connects to camera and transmits live video and audio.” (Ex. 1002,
`Provisional at 1, lines 13-15).
`“So as to ensure seamless recording IDC’s [Internet Direct Camera] could
`transmit via various methods. For example, IDC’s could be programmed to jump
`to satellite, cellular wireless or Wi-Fi, in case of DLS failure. A notification of this
`status would alert users to this change. (Ex. 1002, Provisional at 6, liens 19-22).
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`“6. Six ways to transmit data to internet: …
`d) WiMax or Wi-Fi wireless direct to internet
`e) Satellite wireless transmission direct to internet
`f) Cell phone number direct to a WSSC.
`And any combo of above as primary with another as secondary backup” (Ex.
`1002, Provisional from 1, line 31 to 2, line 4).
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`It is readily apparent to a person of ordinary skill in the art that cell phone on power-up
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`automatically connects to a communication network on power-up. This position cannot be
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`disputed by the Petitioner since the Petitioner has fully adopted this position in support of its
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`arguments in the Petition. Accordingly, consistent with the case law, the Provisional conveys
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`with reasonable clarity to those skilled in the art that, as of the filing date, the Patent Owner was
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`in possession of the claimed invention.
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`Therefore, the Petition fails establish a reasonable likelihood that Petitioner would prevail
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`on this issue. Accordingly, Patent Owner is entitled to the benefit of the earlier filing date of the
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`Provisional.
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`IV.
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`THE PETITION FAILS TO ESTABLISH A REASONABLE LIKELIHOOD AT
`LEAST ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
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`Petitioner alleges that the Challenged Claims are unpatentable on the grounds1:
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`• Ground 1: Claims 1-5, 8, and 9 are anticipated by U.S. U.S. Patent Publication
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`2004/0133668 to Nicholas, III (hereinafter “Nicholas”)
`
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`1 In seven (7) other related proceedings involving related AITB patents: (I) IPR2017-02052, Petitioner cites Nair,
`Inuoe, Narayanaswami (“Expanding the Digital Camera’s Reach”, Kusaka (U.S. Patent Publication 2004/0109063),
`Nicholas, and Yamazaki (U.S. Patent Publication 2004/0105008) in asserting nine (9) obvious grounds for
`cancellation; (II) IPR2017-02053, Petitioner cites Inuoe, Nair, Narayanaswami, Yamazaki, Nicholas and Kusaka in
`asserting six (6) obvious grounds for cancellation; (III) IPR2017-02054, Petitioner cites Nair, Lavelle (U.S. Patent
`7,333,785) – this reference was already considered by the Examiner, Nicholas, Kusaka, and Yamazaki in asserting
`eight (8) obvious grounds for cancellation; (IV) IPR2017-02055, Petitioner cites Nicholas, Nair, Umeda and Inuoe
`in asserting three (3) anticipation and obvious grounds for cancellation; (V) IPR2017-02057, Petitioner cites Inuoe,
`Nair, Narayanaswami, Yamazaki, Nicholas, and Kusaka in asserting six (6) obvious grounds for cancellation; (VI)
`IPR2017-02058, Petitioner cites Petitioner cites Inuoe, Nair, Yamazaki, Nicholas and Kusaka in asserting six (6)
`obvious grounds for cancellation; and (VII) IPR2017-02059, Petitioner cites Nicholas, Inuoe, Nair, Narayanaswami,
`Umeda in asserting six (4) anticipation and obvious grounds for cancellation.
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`• Ground 2: Claims 10, 12 and 13 are rendered obvious in view of Nicholas and
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`U.S. Patent Publication 2004/0127208 to Nair et al. (hereinafter “Nair”).
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`• Ground 3: Claims 10, 12 and 13 are rendered obvious in view of Nicholas and
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`U.S. Patent Publication 2004/0109063 to Kusaka et al. (hereinafter “Kusaka”).
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`• Ground 4: Claim 10 is rendered obvious in view of Nicholas and U.S. Patent
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`Publication 2006/0008256 to Khedouri et al. (hereinafter “Khedouri”).
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`• Ground 5: Claims 12 and 13 are rendered obvious in view of Nicholas and U.S.
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`Patent Publication 2006/0143684 to Morris (hereinafter “Morris”).
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`• Ground 6: Claims 1-5, 8 and 9 are rendered obvious in view of U.S. Patent
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`Publication 2004/0109066 to Inoue et al. (hereinafter “Inoue”) and Nair.
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`• Ground 7: Claim 2 is rendered obvious in view Inoue, Nair and Narayanaswami
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`et al., “Expanding the Digital Camera’s reach,” Computer, vol. 37, issue 12 (IEEE
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`Dec. 2004), p. 65 (hereinafter “Narayanaswami”).
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`• Ground 8: Claims 1-5, 8 and 9 are rendered obvious in view of U.S. Publication
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`2002/0150228 to Umeda et al. (hereinafter “Umeda”) and Inoue.
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`• Ground 9: Claims 10, 12 and 13 are rendered obvious in view of Umeda, Inoue
`
`and Kusaka.
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`• Ground 10: Claim 10 is rendered obvious in view of Umeda, Inoue and Khedouri.
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`• Ground 11: Claims 12 and 13 are rendered obvious in view of Umeda, Inoue and
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`Morris.
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`Petition at 7.
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`6
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`
`A.
`
`The Petition Fails to Establish a Motivation to Combine for Obvious
`Grounds
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`With respect to the obvious grounds, Petitioner must demonstrate a reasonable likelihood
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`that at least one of Challenged Claims would have been obvious in view of the art cited in the
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`Petition. See 37 C.F.R. § 42.108(c). “An obviousness analysis requires more than simply
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`showing that each limitation is found in the prior art.” Jacobs Corp. v. Generis III, Inc., IP2014-
`
`01267, Paper 12, slip op. at 8 (P.T.A.B. Jan. 22, 2015) (citing KSR Int’l Co. v. Teleflex, Inc., 550
`
`U.S. 398, 418 (2007). “Petitioner must also show ‘whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.’” Id. (quoting KSR,
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`550 U.S. at 418).
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`A combination of references cannot be used to establish unpatentability unless “a skilled
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`artisan would have been motivated to combine the teachings of the prior art references to achieve
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`the claimed invention ….” Ex Parte Ahlfeld, APPEAL 2014-009272, 2016 WL 4775709, at *3
`
`(P.T.A.B. Sept. 9, 2016) (citing Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`
`1360 (Fed. Cir. 2012)). “To satisfy its burden of proving obviousness, a petitioner cannot employ
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`mere conclusory statements. The petitioner must instead articulate specific reasoning, based on
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`evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools
`
`Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); accord Moses Lake Indus., Inc. v. Enthone,
`
`Inc., IPR2014-00243, Paper 6, slip op. at 20 (P.T.A.B. June 18, 2014) (“MLI must provide more
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`than conclusory expert testimony, … and conclusory rationales to combine the teachings, to
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`present a prima facie case of obviousness.”). The petitioner must establish an adequate reason
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`why a person of ordinary skill in the art would have been prompted to combine prior art elements
`
`“in the way the claimed invention does,” and show there was a “reasonable expectation of
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`success form doing so.” Purdue Pharma L.P. v. Depomed, Inc., 643 F. App’x 960, 965 (Fed. Cir.
`
`2016).
`
`1.
`
`The Petition fails to provide a satisfactory motivation to combine
`Nicholas and Nair (Ground 2)
`
`In support of modifying Nicholas with teachings from Nair, Petitioner alleges:
`
`Nair discloses wireless devices, including cell phones and PDAs, which connect
`to a primary network and then automatically switch to another network when the
`primary network is unavailable. Nair provides of an example of a cellular phone
`or other portable device that seamlessly switches from a local, high-speed low
`cost WLAN (e.g., Wi-Fi) to a WWAN (e.g., a cellular network) when the device
`is out of range of the WLAN. See, e.g., Ex. 1007, Abstract, ¶¶0006, 0009, 0027.
`As discussed in detail below, Nicholas and Nair are in the same field and a person
`of ordinary skill in the art would have been motivated to include the functionality
`in Nair in Nicholas’s device. Madisetti, ¶¶631-636, 668.
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`Petition at 26-27. This conclusory statement fails to provide any factual basis to deduce that a
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`person of ordinary skill in the art would have been motivated to modify Inoue’s laptop or tablet
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`PC camera to incorporate the cell phone roaming system in Nair.
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`Nicholas is not a relevant reference to the claimed invention. The claimed invention is
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`directed to a system and method that “seamlessly and automatically transmits, receives, stores
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`and/or archives still images, video and/or audio” without the necessity of connecting to another
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`device, such as a personal computer (PC) (Ex. 1001 (AITB patent) at col. 1, lines 59-67), but the
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`Petitioner nevertheless relies on a reference that is directed to a personal computer (PC), which
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`was explicitly excluded and taught against by the Patent Owner (Ex. 1006 (Nicholas) at ¶ [0021]
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`(“As shown in Fig. 1, exemplary end user device 100 comprises a mobile client device, such as a
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`notebook or tablet PC, operating under the Microsoft Windows™ XP operating system.”); Ex.
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`1006 (Nicholas) at ¶ [0026] (the notebook or tablet PC “operates as a communications base
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`station”; Ex. 1006 (Nicholas) at ¶ (the notebook or table PC “operating as an access point or a
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`repeater”).
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`However, contrary to the Petitioner’s assertions, Nair is directed to providing “seamless
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`routing between wireless networks” as cell phone user “roams” between the wireless networks
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`(Nair at ¶ [0029]). That is, in Nair, both wireless networks are simultaneously present and
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`available when “handoff” or switch is made from one wireless network to the other wireless
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`network. Hence, Nair fails to teach “seamless routing between wireless networks” when the cell
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`phone user is “not roaming,” i.e., when a wireless network becomes unavailable, as required in
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`the claimed invention.
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`Moreover, even assuming arguendo that the combination is proper, it still will not lead
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`one of ordinary skill in the art to the claimed invention because “seamless routing between
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`wireless networks” as taught by Nair is achieved only when both wireless networks are
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`simultaneously present and available, contrary to the claimed invention.
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`In short, the Petition fails to set forth why a person of ordinary skill in the art would have
`
`combined Nicholas with Nair, and therefore does not establish a reasonable likelihood that
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`Petitioner would prevail on Ground 2 which rely upon this obviousness combination.
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`2.
`
`The Petition fails to provide a satisfactory motivation to combine
`Nicholas and Kusaka (Ground 3)
`
`Although Petitioner admitted that Kusaka was fully considered by the Examiner during
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`the prosecution of the Patent Owner’s predecessor Application Serial No. 11/484,373, now U.S.
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`patent 7,633,524,2 in related inter partes proceeding IPR2017-02058 involving Patent Owner’s
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`U.S. Patent 8,581,991 (Ex. 2001 at 54-55, hereinafter the “‘02058 Petition”), yet the Petitioner
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`fails to disclose this relevant and material information to the Board in this Petition.
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`37 C.F.R. 1.56(a) states that the “duty of candor and good faith” is owed “in dealing with
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`the Office” and that all associated with the filing and prosecution of a patent application have a
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`2 The Petitioner requested initiation of inter partes review of Patent Owner’s U.S. Patent 7,633,524 in IPR2017-
`02054. The Petitioner also relies on the fully considered reference (Kusaka) in IPR2017-02054 and IPR2017-02058.
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`“duty to disclose to the Office” material information. This duty “in dealing with” and “to” the
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`Office extends, of course, to all dealings which such individuals have with the Office, and is not
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`limited to representations to or dealings with the examiner. For example, the duty would extend
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`to proceedings before the Board of Patent Appeals and Interferences and the Office of the
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`Commissioner for Patents (emphasis added).
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`In the ‘02058 Petition, the Petitioner acknowledged the Examiner’s finding and
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`essentially admitted
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`that Kusaka does not
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`teach (a) automatically connects
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`to
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`the
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`communications network on power-up using one of a plurality of available modes of connection,
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`which is designated as a primary mode of connection; and (b) automatically switches to another
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`available mode of connection when the Internet direct device detects that said primary mode of
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`connection to the communications network is unavailable. These two elements are also required
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`in Claims 10, 12 and 13 of the AITB patent.
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`But, as noted herein, Nicholas is not a relevant reference to the claimed invention. The
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`claimed invention is directed to a system and method that “seamlessly and automatically
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`transmits, receives, stores and/or archives still images, video and/or audio” without the necessity
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`of connecting to another device, such as a personal computer (PC) (Ex. 1001 (AITB patent) at
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`col. 1, lines 59-67), but the Petitioner nevertheless relies on a reference that is directed to a
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`personal computer (PC), which was explicitly excluded and taught against by the Patent Owner
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`(Ex. 1006 (Nicholas) at ¶ [0021] (“As shown in Fig. 1, exemplary end user device 100 comprises
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`a mobile client device, such as a notebook or tablet PC, operating under the Microsoft
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`Windows™ XP operating system.”); Ex. 1006 (Nicholas) at ¶ [0026] (the notebook or tablet PC
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`“operates as a communications base station”; Ex. 1006 (Nicholas) at ¶ (the notebook or table PC
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`“operating as an access point or a repeater”).
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`10
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`In short, the Petition fails to set forth why a person of ordinary skill in the art would have
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`combined Nicholas with Kusaka, and therefore does not establish a reasonable likelihood that
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`Petitioner would prevail on Ground 3 which rely upon this obviousness combination.
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`3.
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`The Petition fails to provide a satisfactory motivation to combine
`Nicholas and Khedouri (Ground 4)
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`As noted herein, Nicholas is not a relevant reference to the claimed invention. The
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`claimed invention is directed to a system and method that “seamlessly and automatically
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`transmits, receives, stores and/or archives still images, video and/or audio” without the necessity
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`of connecting to another device, such as a personal computer (PC) (Ex. 1001 (AITB patent) at
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`col. 1, lines 59-67), but the Petitioner nevertheless relies on a reference that is directed to a
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`personal computer (PC), which was explicitly excluded and taught against by the Patent Owner
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`(Ex. 1006 (Nicholas) at ¶ [0021] (“As shown in Fig. 1, exemplary end user device 100 comprises
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`a mobile client device, such as a notebook or tablet PC, operating under the Microsoft
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`Windows™ XP operating system.”); Ex. 1006 (Nicholas) at ¶ [0026] (the notebook or tablet PC
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`“operates as a communications base station”; Ex. 1006 (Nicholas) at ¶ (the notebook or table PC
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`“operating as an access point or a repeater”).
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`Additionally, the Petitioner does not allege that Khedouri3 teaches (a) automatically
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`connects to the communications network on power-up using one of a plurality of available
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`modes of connection, which is designated as a primary mode of connection; and (b)
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`automatically switches to another available mode of connection when the Internet direct device
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`detects that said primary mode of connection to said communications network is unavailable, as
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`required in Claim 10 of the AITB patent.
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`3 Khedouri may not be a valid prior reference because its filing date of September 29, 2014 is within 1-year of the
`effective filing date of the AITB patent and, therefore the Patent Owner can submit 37 C.F.R. 1.131 to swear behind
`Khedouri. The Patent Owner reserve its right to submit such 1.131 declaration in Patent Owner Response (in the
`event the Board institutes inter partes review).
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`11
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`IPR2017-02056 – Patent Owner’s Preliminary Response
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`In short, the Petition fails to set forth why a person of ordinary skill in the art would have
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`combined Nicholas with Khedouri, and therefore does not establish a reasonable likelihood that
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`Petitioner would prevail on Ground 4 which rely upon this obviousness combination.
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`4.
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`The Petition fails to provide a satisfactory motivation to combine
`Nicholas and Morris (Ground 5)
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`As noted herein, Nicholas is not a relevant reference to the claimed invention. The
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`claimed invention is directed to a system and method that “seamlessly and automatically
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`transmits, receives, stores and/or archives still images, video and/or audio” without the necessity
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`of connecting to another device, such as a personal computer (PC) (Ex. 1001 (AITB patent) at
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`col. 1, lines 59-67), but the Petitioner nevertheless relies on a reference that is directed to a
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`personal computer (PC), which was explicitly excluded and taught against by the Patent Owner
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`(Ex. 1006 (Nicholas) at ¶ [0021] (“As shown in Fig. 1, exemplary end user device 100 comprises
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`a mobile client device, such as a notebook or tablet PC, operating under the Microsoft
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`Windows™ XP opera