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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A.
`
`Patent Owner
`
`
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`
`
`IPR2018-00394
`PATENT 6,622,018
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`
`
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`Table of Contents
`INTRODUCTION .................................................................................... 1
`THE ’018 PATENT .................................................................................. 1
`RELATED PROCEEDINGS .................................................................... 3
`THE PETITION SHOULD BE DENIED AS
`IMPERMISSIBLY REDUNDANT UNDER § 325(D) ........................... 4
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 6
`A.
`LEVEL OF ORDINARY SKILL IN THE ART ............................ 7
`B.
`CLAIM CONSTRUCTION ........................................................... 7
`C.
`THE PETITION FAILS TO SHOW A POSITA
`WOULD HAVE COMBINED Ben-Ze’ev, AND Idiot’s
`Guide ............................................................................................... 7
`1.
`The Petition’s Reliance on “PalmRemote” Lacks
`The Required Analysis or Explanation Of How
`Or Why Ben-Ze’ev, And Idiot’s Guide Would Be
`Combined ............................................................................. 9
`The Idiot’s Guide Does Not Support Making The
`Proposed Combination By A POSITA .............................. 11
`Petitioner Provides Only Speculation Through Its
`Declarant To Support The Proposed Combination ............ 15
`D. No Prima Facie Obviousness For “broadcasting a
`message, said message for locating remote devices
`within range of said transceiver” .................................................. 17
`THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW ................................................................................................. 20
`CONCLUSION ....................................................................................... 21
`
`2.
`
`3.
`
`I.
`II.
`III.
`IV.
`
`V.
`
`VI.
`
`VII.
`
`ii
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`
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`List of Exhibits
`
`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom
`
`
`
`
`
`
`iii
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`
`
`IPR2018-00394
`U.S. Patent 6,622,018
`
`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition IPR2018-00394 for Inter Partes Review (“Pet.” or
`“Petition”) of United States Patent No. 6,622,018 (“the ’018 patent” or “EX1001”)
`filed by Apple Inc. (“Petitioner”). The instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II. THE ’018 PATENT
`The ’018 patent is titled “Portable Device Control Console With Wireless
`Connection.” The ʼ018 patent issued September 16, 2003 from U.S. Patent
`Application No. 09/558,413 filed April 24, 2000 and originally assigned to 3Com
`Corporation (3Com).
`The inventors of the ’018 patent observed that remote control devices at the
`time had a number of shortcomings. For example, a separate remote control device
`may be required for each device to be controlled. In some instances, the separate
`remotes could be replaced with a universal remote control; however, universal
`remotes still had their shortcomings. EX1001, 1:31-36. Generally, universal remotes
`at the time often did not have the resources (e.g., memory and computational logic)
`to allow them to be used with all devices, or they might not be capable of controlling
`a new device. Id., 1:37-40. In addition, in order to accommodate the variety of
`devices to be controlled, universal remotes usually had a multiplicity of buttons and
`thus could be difficult to use. Id., 1:40-43.
`According to the invention of the ’018 Patent, a system and method for
`controlling remote devices over a wireless connection is provided. In one
`
`1
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`
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`embodiment, a portable computer system having a transceiver is used to control
`compliant devices. Id., 2:17-22. When it is necessary to locate and identify compliant
`devices, portable computer system transmits a broadcast message that is received by
`compliant remote devices. Id., 8:32-35. Each of the remote devices is manifested on
`a display device of the portable computer system, and one of the devices is selected
`using, for example, a stylus element. Id., 2:27-30. The stylus element can also be
`used to specify commands for controlling the remote device. A position where the
`stylus element makes contact with a surface of the display device of the portable
`computer system is registered. The particular position where the stylus element
`makes contact with the display device is translated into a particular command for
`controlling the remote device. The command is then transmitted to the remote device
`over the wireless connection. Id., 2:31-39. Additionally, a rendering of the remote
`device or of a mechanism that can be used to control the remote device is displayed
`on the display device. The contact of the stylus element with a position in the
`rendering is translated into a particular command for controlling the remote device.
`Id., 2:40-49. Alternatively, a menu of commands for controlling the remote device
`is displayed on the display device. The contact of the stylus element with a position
`in the menu is translated into a particular command for controlling the remote device.
`Id. Furthermore, the movement of the stylus element over the surface of an input
`device is recognized and translated into a particular command for controlling the
`remote device. By moving the stylus element over the surface of the input device,
`motion is imparted to the rendering on the display device of the remote device or the
`mechanism for controlling the remote device. Id., 2:50-56.
`
`2
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`
`
`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 6,622,018 (EX1001).
`
`IPR2018-00394
`U.S. Patent 6,622,018
`
`Number
`
`District
`
`Filed
`
`Name
`Uniloc Luxembourg SA
`et al v. Amazon.com,
`Inc.
`Uniloc USA, Inc. et al v.
`Apple Inc.
`Apple Inc. v. Uniloc
`Luxembourg SA et al
`Apple Inc. v. Uniloc
`Luxembourg SA et al
`Uniloc USA, Inc. et al v.
`Logitech, Inc. et al
`Uniloc USA, Inc. et al v.
`Wink Labs, Inc.
`Uniloc USA, Inc. et al v.
`Motorola Mobility,
`LLC
`Uniloc USA, Inc. et al v.
`Peel Technologies, Inc.
`Uniloc USA, Inc. et al v.
`Huawei Device USA,
`Inc. et al
`Uniloc USA, Inc et al
`v. HTC America, Inc
`Uniloc USA, Inc. et al
`v. LG Electronics USA,
`Inc. et al
`Uniloc USA, Inc. et al v.
`Apple Inc.
`
`
`2-18-cv-
`00092
`
`3-18-cv-
`00363
`IPR2018-
`00394
`IPR2018-
`00395
`3-17-cv-
`06733
`1-17-cv-
`01656
`
`1-17-cv-
`01657
`
`1-17-cv-
`01552
`
`2-17-cv-
`00707
`
`2-17-cv-
`01558
`
`4-17-cv-
`00825
`
`2-17-cv-
`00534
`
`TXED
`
`March 22,
`2018
`
`January 18,
`CAND
`2018
`PTAB December 22,
`2017
`PTAB December 22,
`2017
`CAND November 22,
`2017
`DED November 15,
`2017
`DED November 15,
`2017
`
`DED
`
`October 31,
`2017
`
`TXED
`
`October 20,
`2017
`WAWD October 20,
`2017
`
`Status
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`TXND
`
`TXED
`
`Pending
`
`October 13,
`2017
`July 12, 2017 Transferred to
`CAND
`
`3
`
`
`
`IPR2018-00394
`U.S. Patent 6,622,018
`IV. THE PETITION SHOULD BE DENIED AS IMPERMISSIBLY
`REDUNDANT UNDER § 325(d)
`The Board has repeatedly held that multiple grounds for unpatentability for
`the same claim will not be considered unless the petition itself explains the relative
`strengths and weaknesses of each ground. See Liberty Mut. Ins. Co. v. Progressive
`Cas. Ins. Co., No. CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012). The
`petitioner has made no such showing of relative strengths and weakness vis-à-vis
`the concurrently filed petition with the much of the same principal references or the
`redundant grounds in the petition itself.
`This Petition is redundant to a concurrently filed petition. At the same time
`as the filing of this Petition, Petitioner filed IPR2018-00395 asserting three of the
`same references, including one of the same primary references, Idiot’s Guide, and
`two secondary references, Dara-Abrams and Osterhout. And, the prior art was used
`in the exact way. The instant Petition presents “the same or substantially the same
`prior art or argument previously . . . presented to the Office” in IPR2018-00395 by
`the same Petitioner. 35 U.S.C. § 325(d).
`The petition in IPR2018-00395 contends that the two petitions were
`concurrently filed because of (1) the word count limitation, and (2) the possibility
`that Ben-Ze’ev may not qualify as prior art.1 However, getting around the word-
`count limitation requirements is not a valid excuse for Petitioner’s improper
`
`
`
` 1
`
` Patent Owner acknowledges that one or more of the references may not qualify as
`prior art. However, given the other deficiencies present in the petition, this issue
`need not be addressed at this time.
`
`4
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`redundancy and Petitioner provides no authority to show otherwise. Further, that
`Ben-Ze’ev may not qualify as prior art is not sufficient under controlling authority
`to burden both the Board and the Patent Owner with inter partes review. Controlling
`authority requires a showing of the relative strengths and weaknesses of the
`references be provided to consider redundant. No such showing was provided.
`Petitioner, in IPR2018-00395, purports to rely on Sure-Fire Elec. Corp. v.
`Yongjiang Yin, et. al. IPR2014-01448, Paper 25 (P.T.A.B. June 1, 2015), for support
`of its improper redundancy. However, Petitioner’s reliance on Sure-Fire is
`misplaced because Sure-Fire is not controlling authority, and furthermore, the
`present facts are very different from those of Sure-Fire. First, in Sure-Fire, the
`decision was only regarding one ground to from the same petition (see Sure-Fire,
`Paper 25 at 5). Here, Petitioner seeks to include numerous grounds from serially and
`concurrently filed petitions. Second, in Sure-Fire, the Board found it compelling
`that the addition of a single ground would also only add one additional reference
`to the proceedings. Id. However, here, Petitioner is seeking to include at least one
`additional primary reference, either Ben-Ze’ev or Leichiner, and Petitioner further
`seeks to include at least another secondary reference, Bell (See IPR2018-00395, Pet.
`12).
`
`The seminal holding in Liberty Mut. explained that that “multiple grounds,
`which are presented in a redundant manner by a petitioner who makes no meaningful
`distinction between them, are contrary to the regulatory and statutory mandates, and
`therefore are not all entitled to consideration.” See Liberty Mutual Insurance Co. v.
`Progressive Casualty Insurance Co., CBM2012-00003, 2012 WL 9494791, at *2
`
`5
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`IPR2018-00394
`U.S. Patent 6,622,018
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`(Paper 7 Order) (PTAB October 25, 2012). The Board further confirmed in Liberty
`Mut. (and has since reiterated in legions of cases citing Liberty Mut.) that multiple
`grounds for unpatentability for the same claim will not be considered unless the
`petition itself explains the relative strengths and weaknesses of each ground. Id.
`Here, Petitioner makes no attempt to differentiate the redundant challenges in terms
`of the relative strengths and weaknesses of the numerous overlapping grounds
`between this petition and IPR2018-00395, presumably to avoid having to concede
`any weakness in the Petition.
`
`V.
`
`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The Petition raises the following obviousness challenges:
`
`Ground
`1
`2
`
`3
`
`Claims
`1-7 and 9-10
`8
`
`Reference(s)
`Ben-Ze’ev,2 and Idiot’s Guide 3
`Ben-Ze’ev, and Idiot’s Guide and
`Dara-Abrams 4
`11-17, 19-25, and 27 Ben-Ze’ev, and Idiot’s Guide and Osterhout5
`
`
`
` 2
`
` EX1007, U.S. Patent 6,791,467 (“Ben-Ze’ev”).
`3 EX1008, The Complete Idiot’s Guide to PalmPilot and Palm III (“Idiot’s Guide”).
`4 EX1010, U.S. Patent 6,456,892 (“Dara-Abrams”).
`5 EX1011, U.S. Patent 7,149,506 (“Osterhout”)
`
`6
`
`
`
`Ground
`4
`
`Claims
`18 and 26
`
`IPR2018-00394
`U.S. Patent 6,622,018
`Reference(s)
`Ben-Ze’ev, and Idiot’s Guide and Dara-Abrams
`and Osterhout
`A. LEVEL OF ORDINARY SKILL IN THE ART
`Patent Owner does not offer a competing definition for POSITA at this
`preliminary stage, but reserves the right to do so in the event that trial is instituted.
`
`B. CLAIM CONSTRUCTION
`Patent Owner submits that the Board need not construe any claim term in a
`particular manner in order to arrive at the conclusion that the Petition is
`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`controversy”). Petitioner also has not provided any constructions.
`
`C. THE PETITION FAILS TO SHOW A POSITA WOULD HAVE
`COMBINED Ben-Ze’ev, AND Idiot’s Guide
`To establish obviousness under 35 U.S.C. § 103(a), it is petitioner’s “burden
`to demonstrate . . . that a skilled artisan would have been motivated to combine the
`teachings of the prior art references to achieve the claimed invention.” In re
`Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotations
`omitted). The petitioner must “articulate[] reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted).
`The “factual inquiry” into the reasons for “combin[ing] references must be
`thorough and searching, and the need for specificity pervades.” In re Nuvasive, Inc.,
`842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations omitted). An obviousness
`
`7
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`determination cannot be reached where the record lacks “explanation as to how or
`why the references would be combined to produce the claimed invention.”
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). This requisite
`explanation avoids an impermissible “hindsight reconstruction,” using “the patent
`in suit as a guide through the maze of prior art references, combining the right
`references in the right way so as to achieve . . . The claims in suit.” Id.; In re NTP,
`Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).
`Moreover, Petitioner cannot merely speculate through its declarant, outside
`the four corners of the reference, to carry its burden. The Federal Circuit has
`instructed that “legal determinations of obviousness, as with such determinations
`generally, should be based on evidence rather than on mere speculation or
`conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006);
`K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014)
`(finding the P.T.A.B. correctly rejected conclusory assertions of what would have
`been common knowledge in the art). The Petitioner’s declarant merely parrots the
`same conclusory statements as in the Petition, without providing the required
`“explanation as to how or why the references would be combined to produce the
`claimed invention.” TriVascular, 812 F.3d at 1066; see also Arendi S.A.R.L. v. Apple
`Inc., 832 F.3d 1355, 1362–66 (Fed. Cir. 2016) (recognizing that “reasoned analysis
`and evidentiary support” are required to supply a “limitation missing from the prior
`art” as well as a motivation to combine).
`Here, the Petition is lacking in the required “factual inquiry” into reasons for
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`8
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`IPR2018-00394
`U.S. Patent 6,622,018
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`combining the Ben-Ze’ev and Idiot’s Guide references6 and lacks any “explanation
`as to how or why the references would be combined to produce the claimed
`invention.” And because of that, the Petition engages in impermissible hindsight
`reconstruction.
`1.
`
`The Petition’s Reliance on “PalmRemote” Lacks The
`Required Analysis or Explanation Of How Or Why Ben-
`Ze’ev, And Idiot’s Guide Would Be Combined
`As just one example, the Petition merely makes the conclusion that “[a]s
`evidence of this specific combination pre-dating the ’018 Patent, software called
`“PalmRemote” provided PalmPilot users with the option of utilizing “Graffiti
`commands” to control various functions of a consumer electronic device.” Pet. 22.
`The Petition purports to cite to a screenshot from “The Wayback Machine”
`(EX1020) and to Petitioner’s declarant. However, Petitioner’s reliance on both is
`unavailing.
`First, the screenshot from “The Wayback Machine”7 is completely lacking in
`teaching,
`instruction, explanation, or discussion whatsoever. Indeed,
`any
`Petitioner’s EX1020 lacks any disclosure whatsoever. See EX1020. The entirety of
`
`
`
` 6
`
` For each of the proposed combinations in the Petition, Petitioner fails to provide
`the “factual inquiry” into the reasons for “combin[ing] references must be thorough
`and searching, and the need for specificity pervades.” In re Nuvasive, Inc., 842 F.3d
`at 1381–82. However, because Ben-Ze’ev, AND Idiot’s Guide are the primary
`references for each and every proposed combination, at this preliminary stage only
`the primary proposed combination is addressed. Patent Owner reserves the right to
`address each of the proposed combinations with secondary references should trial be
`instituted.
`7 Patent Owner does not agree that Petitioner has established that the particular
`webpage showed in the screenshot of Petitioner’s EX1020 was publicly available
`prior to April 24, 2000.
`
`9
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`Petitioner’s EX1020 is a single mock-up that merely alleges some functionality. Not
`only is there no evidence that the alleged “PalmRemote” actually existed and was
`actually implemented, but more importantly, the Petition is completely lacking in
`any of the required analysis or explanation of how or why Ben-Ze’ev, and Idiot’s
`Guide would be combined. TriVascular, 812 F.3d at 1066; see also Personal Web
`Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (holding obviousness
`determination to be improper where the record lacked a “clear, evidence-supported
`account” of “how the combination” would work).
`Second, Petitioner’s reliance on its declarant is also inapplicable because
`Petitioner improperly speculates through its declarant. As just one example, the
`Petition cites its declarant for the speculative and conclusory statement: “As Dr.
`Houh explains in his declaration, with the PalmRemote software a user could enter
`Graffiti commands, for example, to turn the volume up and down on a Sony TV”.
`Pet. 22-23 citing EX1003, ¶ 73. However, Dr. Houh’s declaration does not “explain”
`anything, instead the declaration merely parrots the same speculative and
`conclusory statement from the Petition. Compare Pet. 22-23 with EX1003, ¶ 73.
`And, not surprisingly, in the paragraph immediately following, both the Petition and
`Dr. Houh’s declaration come to the same speculative conclusion without evidence
`or analysis: “using the PalmPilot’s Graffiti writing area to control consumer
`appliances, such as those described in Ben-Ze’ev, would have been predictable to a
`person of ordinary skill in the art because that specific combination was already
`being performed before the filing of the ’018 Patent.” Compare Pet. 23 with
`EX1003, ¶ 74.
`
`10
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`IPR2018-00394
`U.S. Patent 6,622,018
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`Thus, Dr. Houh’s declaration consists of no more than speculation and
`conclusions regarding the alleged ability of the “PalmRemote software” and
`regarding what was “predictable to a person of ordinary skill in the art” – without
`explanation or adequate factual support. This is insufficient and Dr. Houh’s
`testimony should not be credited. See 37 C.F.R. § 42.65(a); Rohm & Haas Co. v.
`Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules
`[of evidence] or in our jurisprudence requires the fact finder to credit the
`unsupported assertions of an expert witness.”); Ashland Oil, Inc. v. Delta Resins &
`Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for
`expert opinion going to factual determinations . . . may render the testimony of little
`probative value in a validity determination.”); W.L. Gore & Assocs., Inc. v. Garlock,
`Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To imbue one of ordinary skill in the
`art with knowledge of the invention in suit, when no … reference or references of
`record convey or suggest that knowledge, is to fall victim to the insidious effect of
`a hindsight syndrome wherein that which only the inventor taught is used against its
`teacher.”).
`
`2.
`
`The Idiot’s Guide Does Not Support Making The Proposed
`Combination By A POSITA
`Another example of the Petition failing to provide the required “factual
`inquiry” into reasons for combining Ben-Ze’ev and Idiot’s Guide, failing to offer
`“explanation as to how or why the references would be combined to produce the
`claimed invention,” and improperly speculating through its declarant, is found in the
`Petition’s speculative and conclusory statement that: “To the extent any
`
`11
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`modifications would have been needed to the teachings of Ben-Ze’ev in order to
`accommodate the teachings of the Idiot’s Guide regarding the PalmPilot’s Graffiti
`writing area, such modifications would have been within the level of a POSITA.”
`Pet. 24 citing EX1003, ¶ 76.
`However, for a number of reasons, Petitioner’s conclusory speculation is both
`procedurally and substantively deficient. First, to the extent Petitioner alleges that
`no modifications are necessary in order to make the proposed combination, there is
`none of the required analysis and evidence showing the “factual inquiry” and
`“explanation as to how or why” that would be the case. See Nuvasive, 842 F.3d at
`1381–82; Personal Web, 848 F.3d at 994 (holding obviousness determination to be
`improper where the record lacked a “clear, evidence-supported account” of “how
`the combination” would work).
`Second, the Petition fails to disclose the any of the “needed” modifications
`“to the teachings of Ben-Ze’ev”. See Nuvasive, 842 F.3d at 1381–82 (“[T]he factual
`inquiry whether to combine references must be thorough and searching, and the need
`for specificity pervades . . . .” (quotations and alterations omitted)). Recently, in DSS
`Tech. Mgmt. v. Apple Inc., Nos. 2016-2523, 2016-2524, 2018 (Fed. Cir. Mar. 23,
`2018), the Federal Circuit reversed a PTAB decision on obviousness, noting that the
`Petitioner (Apple) simply pointed to “conclusory statements and unspecific expert
`testimony” to allege a modification would have been within the skill of the
`ordinarily skilled artisan. Apple’s attempt to repeat the same approach here should
`be rejected.
`Third, Petitioner attempts again to merely and improperly speculate through
`
`12
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`its declarant. The speculative and conclusory paragraph in the Petition is simply
`parroted by its declarant, Dr. Houh. Compare Pet. 24 with EX1003, ¶ 76. Lacking
`in both the Petition and Dr. Houh’s declaration is any of the required “factual
`inquiry” and “explanation as to how or why it would have been within the level of
`a POSITA to make “such modifications.” Alza Corp., 464 F.3d at 1290; K/S HIMPP,
`751 F.3d at 1365-66 (finding the P.T.A.B. correctly rejected conclusory assertions
`of what would have been common knowledge in the art); W.L. Gore, 721 F.2d at
`1553 (“To imbue one of ordinary skill in the art with knowledge of the invention in
`suit, when no … reference or references of record convey or suggest that knowledge,
`is to fall victim to the insidious effect of a hindsight syndrome wherein that which
`only the inventor taught is used against its teacher.”).
`Fourth, neither the Idiot’s Guide (EX1008) nor “PalmPilot for Dummies”
`(EX1009) support the speculative and conclusory assertion that “such modifications
`would have been within the level of a POSITA”. The cited portions of the Idiot’s
`Guide merely describe the kinds of customizations (not modifications) an end user
`(not a POSITA) may make to the device that was already supported. For example,
`in Petitioner’s first cited portion of the Idiot’s Guide:
`
`EX1008, p. 89 cited at Pet. 24.
`
`13
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`The above shows that the cited chapter does not disclose or discuss in any
`way modifying the underlying operating system and software of the device to create
`new functionality and features as the proposed combination would require.
`Next, in the second cited portion of the Idiot’s Guide:
`
`
`
`EX1008, p. 96, cited at Pet. 24.
`The above further shows that the cited portion was meant for consumption by
`end-users, not a POSITA. Furthermore, as confirmed by the text in the above, the
`“customizations” (not modifications) discussed are to allow for personalization and
`housekeeping uses – such as changing sounds and alarms. Again, the above does
`not disclose or discuss in any way modifying the underlying operating system and
`software of the device to create new functionality and features as the proposed
`combination would require. See also EX2001, ¶¶ 27-32
`Petitioner’s and Dr. Houh’s reliance on EX1009 fares no better. Because it is
`merely another recitation of the same information intended for an end-user above:
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`EX1009, p. 20.
`Moreover, EX1009 and the above in fact shows that the opposite is true –
`even making customizations to the device of the Idiot’s Guide was difficult and
`unpredictable. Id. (“When I say adventurous, I mean you should be ready to deal
`with problems, because some hacks are very experimental.”)
`Fifth, the alleged and required modification in Petitioner’s proposed
`combination would be to the device of Ben-Ze’ev, not the device of the Idiot’s
`Guide, thus Petitioner’s use and reliance of the Idiot’s Guide is backwards and
`therefore inapposite.
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`3.
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`Petitioner Provides Only Speculation Through Its Declarant
`To Support The Proposed Combination
`As a final example, the Petition speculates through its declarant, without
`analysis or evidence other than piling speculation upon the speculation, that:
`“Accordingly, a POSITA would have found it obvious to apply the Idiot’s Guide
`teaching regarding the PalmPilot’s Graffiti writing area to Ben-Ze’ev’s adaptive
`remote controller because the combination amounts to combining prior art elements
`according to known methods to yield the predictable and beneficial result of Ben-
`Ze’ev’s adaptive remote controller having an input device, such as the Graffiti
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`writing area, through which a user could remotely control appliances with stylus
`command strokes.” Compare Pet. 24-25 with EX1003, ¶ 76 (identical). Again, the
`Petition fails to provide any of the required analysis and evidence required, instead
`Petitioner provides only speculation and conjecture for its proposed combination.
`Alza Corp., 464 F.3d at 1290; Nuvasive, 842 F.3d at 1381–82 (“[T]he factual inquiry
`whether to combine references must be thorough and searching, and the need for
`specificity pervades . . . .” (quotations and alterations omitted)); Magnum Oil, 829
`F.3d at 1380 (“[A] petitioner cannot employ mere conclusory statements” and “must
`instead articulate specific reasoning, based on evidence of record . . . .”); DSS Tech.
`Mgmt. v. Apple Inc., Nos. 2016-2523, 2016-2524, 2018 (Fed. Cir. Mar. 23,
`2018)(improper to rely on “conclusory statements and unspecific expert testimony”
`to allege a modification would have been within the skill of the ordinarily skilled
`artisan).
`In sum, the Petition is lacking in the required “factual inquiry” into reasons
`for combining the Ben-Ze’ev and Idiot’s Guide references and lacks any
`“explanation as to how or why the references would be combined to produce the
`claimed invention.” Furthermore, Petitioners improperly speculate through its
`declarant, who provides no analysis or evidence, and instead merely parrots the
`speculative and conclusory statements of the Petition. And because of that, the
`Petition engages in impermissible hindsight reconstruction. Therefore, because
`every ground in the Petition relies on the unsupported and improper combination of
`Ben-Ze’ev and Idiot’s Guide, the Petition should be denied.
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`D. No Prima Facie Obviousness For “broadcasting a message, said message
`for locating remote devices within range of said transceiver”
`As discussed above, the Petition fails to show a POSITA would have
`combined Ben-Ze’ev and Idiot’s Guide, and for that reason alone, the Petition should
`be denied in its entirety. However, the Petition further fails to show that Ben-Ze’ev
`discloses “broadcasting a message”.
`The Petition relies solely on Ben-Ze’ev for this limitation. However, the
`Petition acknowledges that Ben-Ze’ev does not disclose “broadcasting a message”,
`as required by the claim language. Instead, the Petition admits that Ben-Ze’ev only
`states that “the remote controller periodically interrogates the existence of all
`appliances in its vicinity.” See Pet 27; EX1007, 10:49-51 (emphasis added). As the
`claim language plainly states, the limitation requires “broadcasting a message, said
`message for locating remote devices within range of said transceiver,” a “broadcast
`message” as required by the claims is a message sent to every device at once. See
`EX2001, ¶ 45. Interrogation, on the other hand, is distinct because “interrogation”
`in computer science is to communicate with individual machines one at a time, and
`to “interrogate” multiple machines would mean doing so sequentially, one at a time.
`Id. ¶ 48.
`In addition to plainly stating that it is interrogating, and not broadcasting, Ben-
`Ze’ev further confirms the distinction by disclosing that “All appliances in one
`location are preferably grouped to one local network, which receives a network-
`unique code, so that the remote controller can identify each appliance and local
`network.” EX1007, 8:65-9:2 (emphasis added). In other words, in Ben-Ze’ev, the
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`appliances are first grouped onto one local network with one another, and because
`of already being grouped, the appliances of Ben-Ze’ev are available to be
`“interrogated” one at a time. This is in contrast to the invention of the ’018 Patent,
`which does not presume or require the remote devices to be grouped in any way and
`further does not use the slow and tedious method of iterating through every possible
`device address (a.k.a. interrogating). Instead, the invention of the ’018 Patent
`performs “broadcasting a message” to reach all devices at once.8
`Tellingly, Petitioners do not dispute that the “interrogation signal” of Ben-
`Ze’ev is not “broadcasting a message” as required by the claim language. Instead,
`Petitioner merely speculates through its declarant that “[a] POSITA would
`understand that Ben-Ze’ev’s adaptive remote controller broadcasts the interrogation
`signal because the signal is not transmitted to any one particular recipient—it is
`transmitted to all appliances in the vicinity.” Pet. 27. Petitioner purports to rely on
`its declarant for support, however, its declarant merely recites a dictionary definition
`for the term “broadcast” in isolation, and then parrots the speculative and conclusory
`statement of the Petition. Compare Pet. 27 with EX1003, at p. 55. As discussed
`above, Ben-Ze’ev interrogates the specific appliances that already are already
`joined on a single network. In other words, Ben-Ze’ev sends its signal specifically
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` In fact, the ’018 Patent expressly discusses requiring devices to first be grouped
`into a local network as a drawback in the prior art: “A more modern solution is to
`wire devices together into a network of some sort, so that they can be c