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.
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`Patent Owner
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`IPR2018-00395
`PATENT 6,622,018
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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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.
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`Patent Owner
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`IPR2018-00395
`PATENT 6,622,018
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2018-00395
`U.S. Patent 6,622,018
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`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 Leichiner, AND Idiot’s
`Guide ............................................................................................... 7
`1.
`The Petition’s Reliance on “PalmRemote” Lacks
`The Required Analysis or Explanation Of How
`Or Why Leichiner, 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” .................................................. 16
`THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW ................................................................................................. 19
`CONCLUSION ....................................................................................... 20
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`2.
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`3.
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`I.
`II.
`III.
`IV.
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`V.
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`VI.
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`VII.
`
`ii
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`IPR2018-00395
`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
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`iii
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`IPR2018-00395
`U.S. Patent 6,622,018
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition IPR2018-00395 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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`IPR2018-00395
`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
`mechanism for controlling the remote device. Id., 2:50-56.
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`2
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`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 6,622,018 (EX1001).
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`IPR2018-00395
`U.S. Patent 6,622,018
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`Number
`
`District
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`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
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`2-17-cv-
`01558
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`4-17-cv-
`00825
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`2-17-cv-
`00534
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`TXED
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`March 22,
`2018
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`January 18,
`CAND
`2018
`PTAB December 22,
`2017
`PTAB December 22,
`2017
`CAND November 22,
`2017
`DED November 15,
`2017
`DED November 15,
`2017
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`DED
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`October 31,
`2017
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`TXED
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`October 20,
`2017
`WAWD October 20,
`2017
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`Status
`Pending
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`Pending
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`Pending
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`Pending
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`Pending
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`Pending
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`Pending
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`Pending
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`Pending
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`Pending
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`TXND
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`TXED
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`Pending
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`October 13,
`2017
`July 12, 2017 Transferred to
`CAND
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`3
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`IPR2018-00395
`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, either in
`this petition or in a concurrently filed petition against the same patent.
`This Petition is redundant to a concurrently filed petition. At the same time
`as the filing of this Petition, Petitioner filed IPR2018-00394 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 IPR2018-00394 by
`the same Petitioner. 35 U.S.C. § 325(d).
`The Petition 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 Pet. 14. However, getting around the word-count limitation
`requirements is not a valid excuse for Petitioner’s improper redundancy, and
`Petitioner provides no authority to show otherwise. Further, that Ben-Ze’ev may not
`
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` 1
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` 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.
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`U.S. Patent 6,622,018
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`qualify as prior art, is not sufficient under controlling authority to burden both the
`Board and the Patent Owner. 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 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 it is
`not controlling authority and because the facts there are very different from the facts
`here. First, in Sure-Fire, the decision regarded only one ground 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 add only 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 one other secondary reference, Bell. See
`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
`(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
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`U.S. Patent 6,622,018
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`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 in
`this petition and IPR2018-00394, presumably to avoid having to concede any
`weakness in the Petition.
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`V.
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`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
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`Claims
`1-7 and 9
`8
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`3
`4
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`10
`11-17, 19, 21-22, 24-
`25, and 27
`18 and 26
`5
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`Reference(s)
`Leichiner,2 and Idiot’s Guide 3
`Leichiner, and Idiot’s Guide and
`Dara-Abrams 4
`Leichiner, and Idiot’s Guide and Bell5
`Leichiner, and Idiot’s Guide and Osterhout6
`Leichiner, and Idiot’s Guide and Dara-Abrams
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` 2
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` EX1027, Japanese Pub. No. JPH06319177 (“Leichiner”).
`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 EX1029, U.S. Patent No. 7,894,474 (“Bell”)
`6 EX1011, U.S. Patent 7,149,506 (“Osterhout”)
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`6
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`U.S. Patent 6,622,018
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`6
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`20 and 23
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`and Osterhout
`Leichiner, and Idiot’s Guide and Osterhout and
`Bell
`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 Leichiner, 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
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`IPR2018-00395
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`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, in order 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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`IPR2018-00395
`U.S. Patent 6,622,018
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`combining the Leichiner and Idiot’s Guide references7 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
`Leichiner, 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. 21.
`The Petition purports to cite to a screenshot from “The Wayback Machine”
`(EX1020), and Petitioner’s declarant. However, Petitioner’s reliance on both is
`unavailing.
`First, the screenshot from “The Wayback Machine”8 is completely lacking in
`teaching,
`instruction, explanation, or discussion whatsoever. Indeed,
`
`any
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` 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 Leichiner 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.
`8 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.
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`9
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`IPR2018-00395
`U.S. Patent 6,622,018
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`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” 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 Leichiner 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. For 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. 21-
`22 citing EX1030, ¶ 72. However, Dr. Houh’s declaration does not “explain”
`anything, instead the declaration merely parrots a speculative and conclusory
`statement from the Petition. Compare Pet. 21-22 with EX1003, ¶ 72. 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 devices would have
`been predictable to a POSITA because that specific combination was already being
`performed before the filing of the ’018 Patent.” Compare Pet. 22 with EX1003, ¶
`73.
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`IPR2018-00395
`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 point where the Petition is lacking in the required “factual inquiry”
`into reasons for combining Leichiner and Idiot’s Guide, 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, is when the Petition makes
`the speculative and conclusory statement that: “To the extent any modifications
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`IPR2018-00395
`U.S. Patent 6,622,018
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`would have been needed to the teachings of Leichiner 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. 23 citing
`EX1003, ¶ 75.
`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 any of the “needed” modifications “to
`the teachings of Leichiner”. 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
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`IPR2018-00395
`U.S. Patent 6,622,018
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`its declarant. The speculative and conclusory paragraph in the Petition is simply
`parroted by its declarant, Dr. Houh. Compare Pet. 23 with EX1003, ¶ 75. 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. 23.
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`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. 23.
`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 Leichiner, not the device of the Idiot’s Guide,
`thus Petitioner’s use and reliance of the Idiot’s Guide is backwards and therefore
`inapposite.
`
`3.
`
`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 PalmPilot’s
`Graffiti writing area to Leichiner’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 Leichiner’s adaptive remote
`controller having an input device through which a user could remotely control
`appliances with stylus command strokes.” Compare Pet. 23-24 with EX1003, ¶ 76.
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`Again, the Petition fails to provide any of the required analysis and evidence,
`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 the required “factual inquiry” into reasons for
`combining the Leichiner 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, Petitioner improperly speculate through its declarant, who provides no
`analysis or evidence, and instead merely parrots the speculative and conclusory
`statements of the Petition. These artifices result in impermissible hindsight
`reconstruction. Therefore, because every ground in the Petition relies on the
`unsupported and improper combination of Leichiner and Idiot’s Guide, the Petition
`should be denied.
`
`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
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`combined Leichiner and Idiot’s Guide, and for that reason alone, the Petition should
`be denied in its entirety. However, the Petition further fails to show Leichiner
`discloses “broadcasting a message”.
`The Petition relies solely on Leichiner for this limitation. However, the
`Petition acknowledges that Leichiner does not disclose “broadcasting a message”,
`as required by the claim language. Instead, the Petition admits that Leichiner only
`discloses that it “generates polling messages to all of the controlled devices in the
`immediate vicinity.” See Pet 26; EX1027, ¶ 22 (emphasis added). But 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, ¶ 47. Polling, on the other hand, is distinct because “polling” in computer
`science is to communicate with individual machines one at a time, and to “poll”
`multiple machines would mean doing so sequentially, one at a time. Id. ¶ 48-51.
`In addition to plainly stating that it is polling, and not broadcasting , Leichiner
`further confirms the distinction by disclosing that “[w]hat is provided is an adaptive
`standalone remote control system which conducts polling to each of the controlled
`devices located in the immediate vicinity”. EX1027, ¶ 11 (emphasis added). And
`that “[a]n important aspect of the present invention is that the controlled device is
`polled by the controller.” Id, ¶ 11 (emphasis added). In other words, Leichiner
`specifically states that each of the individual controlled devices is polled, one at a
`time.
`
`Tellingly, Petitioners do not dispute that the “polling messages” of Leichiner
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`is not “broadcasting a message” as required by the claim language. Instead,
`Petitioner merely speculates through its declarant that “[a] POSITA would
`understand that Leichiner’s adaptive remote controller broadcasts the polling
`message because the message is not transmitted to any one particular recipient—it
`is transmitted to all devices in the vicinity for the purpose of detecting their
`presence.” Pet. 26. 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. 26 with EX1003, at p. 51-52. As discussed above, Leichiner polls the
`specific controlled devices one at a time in a sequence. In other words, Leichiner
`sends its “polling message” specifically to each device one at a time and does not
`perform “broadcasting a message” as required by the claims. Thus, a POSITA’s
`understanding of the “polling message” of Leichiner would be that it is the exact
`opposite of the required “broadcast message” of the ’018 Patent.
`Moreover, Petitioner’s reliance on the conclusory speculation of a declarant
`should be rejected because 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); see also 37 C.F.R. §
`42.104(b)(4) (requiring petitions to “specify where each element of the claim is
`found in the prior art patents or printed publications relied upon”) (emphasis
`added); In re Sang Su Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002
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