UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG S. A.1
`Patent Owner
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`IPR2018-00394
`PATENT 6,622,018
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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` The owner of this patent is Uniloc 2017 LLC.
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` 1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG S. A.1
`Patent Owner
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`
`
`IPR2018-00394
`PATENT 6,622,018
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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`
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` The owner of this patent is Uniloc 2017 LLC.
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` 1
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`I.
`II.
`III.
`IV.
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`V.
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`D.
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`INTRODUCTION.................................................................................. 1
`THE ’018 PATENT ............................................................................... 1
`RELATED PROCEEDINGS ................................................................. 3
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ....................................................................... 4
`A.
`Level of ordinary skill in the art ................................................... 5
`B.
`Claim construction ....................................................................... 5
`C.
`No proof of obviousness for “broadcasting a message,
`said message for locating remote devices within range
`of said transceiver” ....................................................................... 8
`The Petition fails to prove sufficient motivation to
`combine the cited portions of the Ben-Ze’ev and Idiot’s
`Guide references as proposed ..................................................... 12
`1.
`The Petition’s reliance on “PalmRemote” lacks
`the required analysis or explanation of how or
`why it would have been obvious to combine the
`cited of the Ben-Ze’ev and Idiot’s Guide
`references as proposed...................................................... 13
`The Idiot’s Guide does not support making the
`proposed combination by a POSITA ................................ 17
`Petitioner impermissibly relies upon mere
`speculation ....................................................................... 21
`CONCLUSION .................................................................................... 22
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`2.
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`3.
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`IPR2018-00394
`U.S. Patent 6,622,018
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`Table of Contents
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`ii
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`IPR2018-00394
`U.S. Patent 6,622,018
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`List of Exhibits
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`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom (previously filed)
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`iii
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`IPR2018-00394
`U.S. Patent 6,622,018
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`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this 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 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 August 15, 2006, from U.S. Patent Application
`No. 09/727,727 filed September 16, 2003 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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`IPR2018-00394
`U.S. Patent 6,622,018
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`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
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`U.S. Patent 6,622,018
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`mechanism for controlling the remote device. Id., 2:50-56.
`
`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 6,622,018 (EX1001).
`
`Case Caption
`
`Uniloc USA, Inc.
`et al v. Apple Inc.
`Uniloc USA, Inc.
`et al v. LG
`Electronics USA,
`Inc. et al
`Uniloc USA, Inc et
`al v. HTC
`America, Inc
`Uniloc USA, Inc.
`et al v. Huawei
`Device USA, Inc.
`et al
`Uniloc USA, Inc.
`et al v. Peel
`Technologies, Inc.
`Uniloc USA, Inc.
`et al v. Motorola
`Mobility, LLC
`Uniloc USA, Inc.
`et al v. Wink Labs,
`Inc.
`Uniloc USA, Inc.
`et al v. Logitech,
`Inc. et al
`Apple Inc. v.
`Uniloc
`Luxembourg SA et
`al
`Uniloc USA, Inc.
`
`Case
`Number
`2-17-cv-
`00534
`4-17-cv-
`00825
`
`2-17-cv-
`01558
`
`2-17-cv-
`00707
`
`1-17-cv-
`01552
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`1-17-cv-
`01657
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`1-17-cv-
`01656
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`3-17-cv-
`06733
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`IPR2018-
`00395
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`District
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` Case Filed
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` Status
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`TXED
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`July 12, 2017
`
`Pending
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`TXND
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`October 13,
`2017
`
`Pending
`
`WAWD
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`TXED
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`October 20,
`2017
`
`October 20,
`2017
`
`DED
`
`DED
`
`DED
`
`CAND
`
`PTAB
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`October 31,
`2017
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`November 15,
`2017
`
`November 15,
`2017
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`November 22,
`2017
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`December 22,
`2017
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
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`3-18-cv-
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`CAND
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`January 18,
`
`Pending
`
`3
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`IPR2018-00394
`U.S. Patent 6,622,018
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`2018
`TXED March 22, 2018
`
`Pending
`
`00363
`2-18-cv-
`00092
`
`3-18-cv-
`02907
`
`et al v. Apple Inc.
`Uniloc
`Luxembourg SA et
`al v. Amazon.com,
`Inc.
`Uniloc USA Inc et
`al v. LG
`Electronics
`U.S.A., Inc. et al
`IV. 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:
`
`CAND May 17, 2018
`
`Pending
`
`Ground
`1
`2
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`3
`4
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`Claims
`1−7 and 9−10
`8
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`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
`Ben-Ze’ev, and Idiot’s Guide and Dara-Abrams
`18 and 26
`and Osterhout
`
`
`
` 2
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` 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”)
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`4
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`A. Level of ordinary skill in the art
`While the Petition cites paragraph 32 of the declaration of Dr. Houh (EX1030)
`as allegedly “noting the level of ordinary skill in the art,” the cited paragraph
`contains no such definition and, instead, merely offers the following general
`statements: “I understand that the level of ordinary skill may be reflected by the prior
`art of record, and that a person of ordinary skill in the art to which the claimed subject
`matter pertains would have the capability of understanding the scientific and
`engineering principles applicable to the pertinent art. I understand that one of
`ordinary skill in the art has ordinary creativity, and is not an automaton.” Pet. 11
`(citing EX1030 ¶ 32). Because Petitioner opted not to quote or cite to any alleged
`definition from the attached declaration, the Petition itself is bereft of any expressed
`definition for the definition of a person of ordinary skill in the art.
`Patent Owner relies on the expert declaration of Mr. Easttom as evidentiary
`support for certain arguments presented herein. See, e.g., EX2002 ¶¶ 1−62. Mr.
`Easttom defined a person of ordinary skill in the art as of April 24, 2000 as someone
`who “possessed on the priority date a bachelor’s degree in electrical engineering or
`computer science (or related technical degree) with at least two years of experience
`in communications including wireless communications and networking. More
`experience could be substituted for educational requirements.” Id. at ¶ 13.
`
`B. Claim construction
`Petitioner has not and cannot prove obviousness though its application of an
`unreasonably broad construction of “broadcasting” that is untethered to the plain
`and ordinary meaning of that term, particularly when it is understood in light of both
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`the intrinsic and extrinsic evidence. See Mentor Graphics Corp., v. Synopsys, Inc.,
`IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015),
`aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed.
`Cir. 2016) (finding Petitioner’s claim construction unreasonable in light of the
`specification, and therefore, denying Petition as tainted by reliance on an incorrect
`claim construction).
`Claim 1 recites “broadcasting” within the informative context of “[a] method
`for controlling a remote devices over a wireless connection, said method
`comprising: a) establishing said wireless connection between a transceiver and said
`remote device by: broadcasting a message [in the singular], said message for
`locating remote devices within range of said transceiver . . . .” Independent claim 11
`recites similar claim language, as does independent claim 21 (albeit in the context
`of “transmitting commands . . . over said radio connection.”)
`This claim language reflects example embodiments in the specification
`including, for example, the disclosure that the “portable computer system transmits
`a broadcast message 640 (e.g., an inquiry 504) that is received by compliant remote
`devices 610-630.” EX1001, 8:33−36. It is significant that the broadcast message 640
`is referenced here (and elsewhere in the specification) in the singular, yet it is
`receivable by multiple devices.
`The Petition citation to the Microsoft Computer Dictionary undermines the
`theory set forth in the Petition. Specifically, the page cited in the Petition provides
`the following two technical definitions:
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`EX1012 at page 5 of 9 (cited at Pet. 26). As shown above, the Microsoft Computer
`Dictionary cited in the Petition defined “a broadcast message” as being “one” (i.e.,
`in the singular) that is “distributed to all stations.” Id. This is further confirmed in
`the secondary definition, which states that broadcasting in the context of radio refers
`to “a transmission” in the singular that is “sent to more than one recipient.”
`These dictionary definitions are readily contrasted, for example, with the
`demonstrably different context of a remote controller that periodically interrogates
`appliances. While Ben-Ze’ev uses the word “interrogates” and the Leichiner
`reference cited in related matter IPR2018-00395 uses the word “polling,” Mr.
`Easttom explains in his declaration that the term “polling” was generally understood
`as involving “interrogat[ing] its connected terminals in a round robin sequence.”
`EX2001 ¶ 48 (citation omitted); see also id. at ¶¶ 49−52. Mr. Easttom further offered
`evidence confirming that “the standard for network broadcasting specifically
`describes the disadvantages of such polling [i.e., interrogating] and makes it very
`clear that polling is different than” the claimed broadcasting. Id. at ¶ 51 (quoting the
`standard
`in RFC
`919
`for
`network
`broadcasting,
`at
`available
`https://tools.ietf.org/html/rfc919). Mr. Easttom concluded, consistent with the
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`overwhelming evidence he offered and his accompanying explanations, that the
`claimed broadcasting is distinguishable from the polling/interrogating disclosed in
`Ben-Ze’ev. Id. at ¶ 52.
`This distinction may also be readily explained in a more general sense, for
`example, in the context of a radio station broadcasting an FM signal. Clearly an FM
`radio station need not generate individual polling messages for each individual car
`radio receiving and playing back the transmission signal. Rather, a radio station
`generally broadcasts a singular transmission that is receivable by any FM receiver
`within range and tuned into the appropriate frequency. This example further
`demonstrates a real and meaningful distinction between the technical terms
`“broadcasting” and “polling.” The Petition should be denied as being based entirely
`on a theory that equates these readily-distinguishable terms.
`
`C. No proof of obviousness for “broadcasting a message, said message for
`locating remote devices within range of said transceiver”
`The Petition relies solely on Ben-Ze’ev for the limitation “establishing said
`wireless communication between said transceiver and said remote device by:
`broadcasting a message, said message for locating remote devices within range of
`said transceiver,” as recited in independent claims 1 and 11 (and similarly recited
`in independent claim 21). In doing so, 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).
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`As the claim language plainly states, the limitation requires “broadcasting a
`message [in the singular], 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; see also claim construction discussion
`in §IV.B, supra. The interrogation in Ben-Ze’ev is distinct from “broadcasting a
`message” because “interrogation” in computer science is to communicate with
`individual machines one at a time, and to “interrogate” multiple machines, that
`would have to be done sequentially, one at a time. Id. ¶ 48−52.
`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
`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 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). Rather, the invention of the ’018 patent
`performs a specifically-claimed form of “broadcasting a message” to reach all
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`devices at once.6
`In a failed attempt to cure this clear distinction, Petitioner 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. Neither the Petition nor its attached declaration points to any disclosure within
`the Ben-Ze’ev reference itself allegedly supporting this incorrect and speculative
`interpretation of the “interrogation” in Ben-Ze’ev. At most, the Petition merely cites
`an extraneous dictionary definition for “broadcast” (not “interrogation”) relied upon
`the attached declaration. Compare Pet. 27 with EX1003, at p. 55. That a disparate
`dictionary may define “broadcast” in a particular manner does not mean that the
`distinguishable and specific form of “interrogation” disclosed in Ben-Ze’ev—a
`completely separate reference—necessarily operates in the conclusory manner
`argued by Petitioner.
`Moreover, the PTAB recently emphasized in its August 2018 update to the
`American Invents Act Trial Practice Guide (the “Updated TPG”) that expert
`testimony “cannot take the place of a disclosure in a prior art reference, when that
`disclosure is required as part of the unpatentability analysis.” Available at
`
`
`
` 6
`
` 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 controlled
`from a central location such as a personal computer. However, this approach also
`has a number of shortcomings.” EX1001, 1:53-56.
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`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice
`_Guide.pdf (citations omitted). The PTAB further instructed in that update that “in
`an obviousness analysis, conclusory assertions from a third party about general
`knowledge in the art cannot, without supporting evidence of record, supply a
`limitation that is not evidently and indisputably within the common knowledge of
`those skilled in the art.” Id. (citation omitted). Petitioner and its declarant run afoul
`of these principles in suggesting an unrelated dictionary definition somehow adds
`missing description in Ben-Ze’ev concerning its distinguishable “interrogation”.
`The Petition relies exclusively on the same faulty analysis for the remaining
`two independent claims, Claims 11 and 21, as it does for Claim 1. See Pet. 79
`(“Because Ben-Ze’ev in view of the Idiot’s Guide renders obvious claim elements
`[1.1]-[1.7], as discussed above, Ben-Ze’ev in view of the Idiot’s Guide also renders
`obvious claim elements [11.7]-[11.13]”); Pet. 81−82 (“Therefore, for the reasons set
`forth in association with [1.2], Ben-Ze’ev in view of the Idiot’s Guide renders
`obvious this limitation.”)
`Therefore, in addition to failing to show that a POSITA would combine Ben-
`Ze’ev and the Idiot’s Guide reference, as described above in Section IV.D (infra),
`the Petition should be denied in its entirety as applying in incorrect claim
`construction and as failing at least to prove that Ben-Ze’ev discloses “broadcasting
`a message, said message for locating remote devices within range of said
`transceiver” as required by the claim language.
`
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`D. The Petition fails to prove sufficient motivation to combine the cited
`portions of the Ben-Ze’ev and Idiot’s Guide references as proposed
`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
`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
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`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
`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.” 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 it would have been
`obvious to combine the cited of the Ben-Ze’ev and Idiot’s
`Guide references as proposed
`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”
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`13
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`(EX1020), and Petitioner’s declarant. However, Petitioner’s reliance on both is
`unavailing.
`In the Institution Decision, the Board stated that “Petitioner merely references
`PalmRemote software as support for its assertion that skilled artisans did combine
`Ben-Ze’ev’s and Idiot’s Guide’s teachings in the manner Petitioner suggests with
`predictable results, and therefore had reason to do so.” Institution Decision at 14.
`However, there is nothing in the illustration from “The Wayback Machine”
`screenshot that supports the Board’s contention. The screenshot merely shows an
`illustration, and that mere illustration does not in any way support the contention
`that “skilled artisans did combine Ben-Ze’ev’s and Idiot’s Guide’s teachings in the
`manner Petitioner suggests with predictable results, and therefore had reason to do
`so.” An artist can easily and readily produce illustrations of the Iron Man suit, or the
`Flux Capacitor (from Back to the Future), but the fact that the mere illustration was
`made does not mean that a POSITA could combine the elements illustrated “with
`predictable results, and therefore had reason to do so.” Missing from the illustration
`on the screenshot is any support or evidence that what is illustrated was within the
`technical ability and know-how of a person of ordinary skill in the art at the time.
`First, the screenshot from “The Wayback Machine”7 is completely lacking
`in any teaching, instruction, explanation, or discussion whatsoever. Indeed,
`
`
`
` 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.
`
`14
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`Petitioner’s EX1020 lacks any disclosure whatsoever. See EX1020. The entirety of
`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, much less that such a hypothetical combination was
`within the technical ability and know-how of a POSITA. 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
`
`15
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`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.
`In the Institution Decision, the Board cites to a couple of alleged reasons
`recited by the Petition and echoed by its expert as being allegedly “why the proffered
`combination would have been obvious.” Institution Decision at 15. Specifically, the
`Board recites:
`
`
`
`Institution Decision at 15.
`However, respectfully, Patent Owner disagrees the cited recitations are
`anything but conclusory and unsupported. The first citation that a POSITA would
`have allegedly found it “predictable and advantageous” is nothing but conjecture
`and wholly conclusory. The second citation, that “executing a command with the
`Command stroke in Graffiti writing area can be ‘much faster’ than tapping on the
`screen” (emphasis added), is not only similarly unsupported, but in fact Petitioner
`can’t even definitively come to that conclusion. The Petition can only speculate
`that
`there would be some kind of alleged benefit
`to
`the hypothetical
`
`16
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`IPR2018-00394
`U.S. Patent 6,622,018
`
`combination.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 “predicable 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
`As another example where the Petition is lacking in the required “factual
`inquiry” into reasons for combining Ben-Ze’ev and Idiot’s Guide and lacks any
`“explanation as to how or why the references would be combined to produce the
`claimed invention,” and further improperly speculates through its declarant, the
`Petition makes the speculative and conclusory statement that: “To the extent any
`
`17
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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, Petitioner’s conclusory speculation is both procedurally and
`substantively deficient for a number of reasons. 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.
`
`18
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`IPR2018-00394
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`Third, Petitioner attempts again to merely and improperly speculate through
`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 wh
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