Paper No. __
`Filed: March 18, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SONOS, INC.
`Petitioner
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`v.
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`IMPLICIT, LLC
`Patent Owner
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`IPR2018-00767
`U.S. Patent No. 8,942,252
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Filed: March 18, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`SONOS, INC.
`Petitioner
`
`v.
`
`IMPLICIT, LLC
`Patent Owner
`
`
`
`
`IPR2018-00767
`U.S. Patent No. 8,942,252
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS .......................................................................................... ii
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`TABLE OF AUTHORITIES ................................................................................... iii
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`TABLE OF EXHIBITS ........................................................................................... vi
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`I.
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`II.
`
`INTRODUCTION ........................................................................................... 1
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`IMPLICIT’S SWEAR BEHIND IS LEGALLY DEFECTIVE ...................... 1
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`A.
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`B.
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`C.
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`D.
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`Balassanian Fails to Establish He Invented the Claimed
`Invention ................................................................................................ 1
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`The Swear Behind Lacks Independent Corroboration .......................... 5
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`Implicit Misunderstands Corroboration ................................................ 9
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`The Swear Behind Relies on Improperly Incorporated Material ........10
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`III.
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`IMPLICIT’S SWEAR BEHIND IS SUBSTANTIVELY DEFECTIVE ......12
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`A.
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`B.
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`The Code Fails to Meet “Render Time” .............................................12
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`The Code Does Not Synchronize Between Master and Slave ............15
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`IV. THE PRIOR ART INVALIDATES THE CLAIMS .....................................20
`
`A.
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`B.
`
`C.
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`Sonos’s Prior-Art Combinations Render the Claims Obvious ...........20
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`Implicit’s Objective Evidence Fails ....................................................24
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`The Evidence Shows Janevski Discloses “Master Device Time” ......25
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`V.
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`CONCLUSION ..............................................................................................27
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`
`ii
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`
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`TABLE OF AUTHORITIES
`
`CASES
`
`ABB Inc. v. ROY-G-BIV Corp.,
`IPR2013-00062, -00282, 2014WL1478218 (P.T.A.B. Apr. 11, 2014) ................. 7
`
`ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015) ............................................................................25
`
`Apator Miitors ApS v. Kamstrup A/S,
`887 F.3d 1293 (Fed. Cir. 2018) ..................................................................... 6, 7, 8
`
`Apple Inc. v. California Institute of Technology,
` IPR2017-00210, 2018WL6828779 (P.T.A.B. Dec. 27, 2018) ............................ 3
`
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) ............................................................................22
`
`Avant Technology, Inc. v. Anza technology, Inc.,
`IPR2018-00828, Paper 7 (P.T.A.B. Oct. 16, 2018) .............................................11
`
`Bosch Auto. Serv. Sols., LLC v. Matal,
`878 F.3d 1027 (Fed. Cir. 2017) ............................................................................25
`
`Chen v. Bouchard,
`347 F.3d 1299 (Fed. Cir. 2003) .............................................................................. 5
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) ..........................................11
`
`Coleman v. Dines,
`754 F.2d 353 (Fed. Cir. 1985) ................................................................................ 1
`
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) .............................................................................. 6
`
`Ecolochem, Inc. v. S. California Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) ............................................................................24
`
`Elbit Systems of America, LLC v. Thales Visionix, Inc.,
`881 F.3d 1354 (Fed.Cir. 2018) .............................................................................21
`
`iii
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`
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`Fina Oil & Chem. Co. v. Ewen,
`123 F.3d 1466 (Fed. Cir. 1997) .............................................................................. 1
`
`Hahn v. Wong,
`892 F.2d 1028 (Fed. Cir. 1989). ............................................................................. 5
`
`IBG LLC v. Trading Technologies, Inc.,
`CBM2016-00054, Paper 36 (P.T.A.B. Apr. 7, 2017) ..........................................11
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .............................................................................. 5
`
`KAYAK Software Corp. v. International Business Machines Corp.,
`IPR2016–00608, 2017WL3425957 (P.T.A.B. Aug. 7, 2017) ............................... 9
`
`Kridl v. McCormick,
`105 F.3d 1446 (Fed. Cir. 1997) .............................................................................. 4
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................21
`
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ............................................................................5, 7
`
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .............................................................................. 5
`
`Ormco Corp. v. Align Technology, Inc.,
`463 F.3d 1299 (Fed. Cir. 2006). ...........................................................................25
`
`Panduit Corp. v. Corning Optical Commc’ns LLC,
`IPR2017-01074, 2018 WL 4773429, at *8 (P.T.A.B. Oct. 1, 2018) ..................... 8
`
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) .............................................................................. 5
`
`Singh v. Brake,
`222 F.3d 1362 (Fed. Cir. 2000) .............................................................................. 4
`
`Slip Track Sys. v. Metal-Lite, Inc.,
`304 F.3d 1256 (Fed. Cir. 2002) ............................................................................12
`
`iv
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`
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`Tavory v. NTP, Inc.,
`297 F. App’x 976 (Fed. Cir. 2008) ......................................................................10
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`TV Management, Inc. v. Perdiemco LLC,
`IPR2016-01278, 2017WL6418915 (P.T.A.B. Dec. 15, 2017) .............................. 4
`
`Weaver v. Houchin,
`467 F. App’x 878 (Fed. Cir. 2012) ......................................................................10
`
`ZTE (USA), Inc. v. Electronics and Telecommunications Research Institute,
`IPR2015-00028, Paper 12 (P.T.A.B. Mar. 20, 2015 ............................................10
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`REGULATIONS
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`37 C.F.R. §42.24(b)(2) .............................................................................................11
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`37 C.F.R. §42.6(a)(3) ...............................................................................................11
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`v
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`TABLE OF EXHIBITS
`
`DESCRIPTION
`U.S. Patent No. 8,942,252 to Balassanian et al.
`Patent Owner’s Original Complaint in Implicit, LLC v. Sonos,
`Inc., Case No. 1:17-cv-00259-LPS (D. Del.) (D.I. 1, dated
`03/10/2017)
`Patent Owner’s First Amended Complaint in Implicit, LLC v.
`Sonos, Inc., Case No. 1:17-cv-00259-LPS (D. Del.) (D.I. 34,
`dated 10/06/2017)
`Petitioner’s Answer, Affirmative Defenses, and
`Counterclaims to Patent Owner’s First Amended Complaint
`in Implicit, LLC v. Sonos, Inc., Case No. 1:17-cv-00259-LPS
`(D. Del.) (D.I. 36, dated 11/20/2017)
`Petitioner’s First Amended Answer, Affirmative Defenses,
`and Counterclaims to Patent Owner’s First Amended
`Complaint in Implicit, LLC v. Sonos, Inc., Case No. 1:17-cv-
`00259-LPS (D. Del.) (D.I. 39, dated 1/11/2018)
`Patent Owner’s Initial Claim Charts in Implicit, LLC v. Sonos,
`Inc., Case No. 1:17-cv-00259-LPS (D. Del.) (01/22/2018)
`U.S. Patent No. 7,269,338 to Janevski
`U.S. Provisional Patent Application No. 60/341,574
`Expert Declaration of Roman Chertov
`Publication entitled “Fault-Tolerant Clock Synchronization
`for Distributed Systems with High Message Delay Variation”
`by Marcelo Moraes de Azevedo et al.
`Publication entitled “Network Time Protocol (Version 3)
`Specification, Implementation and Analysis” by David L.
`Mills
`Publication entitled “Time Synchronization Over Networks
`Using Convex Closures” by Jean-Marc Berthaud
`U.S. Patent No. 6,278,710 to Eidson
`U.S. Patent No. 5,642,171 to Baumgartner
`Publication entitled “Data Smoothing” by J.T. Grissom et al.
`
`EXHIBIT
`Ex.1001
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`Ex.1002
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`Ex.1003
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`Ex.1004
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`Ex.1005
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`Ex.1006
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`Ex.1007
`Ex.1008
`Ex.1009
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`Ex.1010
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`Ex.1011
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`Ex.1012
`Ex.1013
`Ex.1014
`Ex.1015
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`vi
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`
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`Ex.1016
`Ex.1017
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`Ex.1018
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`Ex.1019
`Ex.1020
`Ex.1021
`Ex.1022
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`Ex.1023
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`Ex.1024
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`Ex.1025
`Ex.1026
`
`Publication entitled “Smoothing Methods in Statistics” by
`Jeffrey S. Simonoff
`“Modern Dictionary of Electronics,” 7th Edition (1999)
`Printout of “Statistics Glossary v1.1” by Easton & McColl,
`http://www.stats.gla.ac.uk/steps/glossary/index.html (last
`updated September 1997)
`Deposition Transcript of Edward Balassanian, Feb. 27, 2019
`Deposition Transcript of Atif Hashmi, Mar. 8, 2019
`Christian Hurt Email, Jan. 16, 2019
`Rebuttal Expert Declaration of Roman Chertov, Mar. 18,
`2019
`Webster’s New World Dictionary and Thesaurus, Second Ed.
`(2002), “clock”
`Merriam-Webster Online Dictionary, available at
`https://www.merriam-webster.com/dictionary/timer (last
`accessed Mar. 17, 2019), “timer”
`sosisampleclock.h from /2001.11.01/strings/include/
`socketip.c from /2001.11.01/beads/stringssock/main/
`
`
`vii
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`
`
`I.
`
`INTRODUCTION
`
`Recognizing the strength of Sonos’s prior art, Implicit largely rests its case on
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`an attempt to swear behind this prior art. But as explained below, this swear behind
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`is both legally and substantively defective. It fails legally because Balassanian – the
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`owner and lead inventor of the patent – failed to analyze conception and reduction
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`to practice (“RTP”) from the perspective of the claimed invention as opposed to the
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`specification generally; Implicit offers no independent corroboration for the
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`undisputedly-biased testimony of Balassanian; and Implicit improperly incorporated
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`by reference its expert’s analysis of how the source code maps to the claims. The
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`swear behind also fails substantively because the code does not meet all claim
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`limitations and the intended purpose of the invention. Finally, Implicit presents no
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`evidence in response to Sonos’s prior art case. Instead, it presents either insufficient
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`conclusory attorney argument, or incorrect legal theories.
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`II.
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`IMPLICIT’S SWEAR BEHIND IS LEGALLY DEFECTIVE
`
`A. Balassanian Fails to Establish He Invented the Claimed Invention
`
`“Conception is the touchstone to determining inventorship.” Fina Oil &
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`Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed.Cir. 1997). To establish conception,
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`a party must show possession of every feature recited in the claim, and every
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`limitation of the claim must have been known to the inventor at the time of the
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`alleged conception. Coleman v. Dines, 754 F.2d 353, 359 (Fed.Cir. 1985).
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`1
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`
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`Balassanian’s testimony cannot establish conception because Balassanian has
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`not addressed the actual claims at issue. Here, Balassanian states that he and Bradley
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`“originally conceived of the inventions set forth in the Claims of the Patents and they
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`were actually reduced to practice before December 11, 2001.” Ex.2001, ¶6. Despite
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`this statement, however, Balassanian repeatedly testified during his deposition that
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`he could not, and would not, provide his understanding of “the inventions set forth
`
`in the Claims of the Patents.” Ex.1019, 20:16-22:24; 26:5-16; 36:3-19; 39:18-41:12;
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`44:22-45:3; 47:6-49:20; 50:11-22; 51:22-52:4; 53:1-24; 165:9-166:10. As one
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`example, when asked “[w]hat are the inventions set forth in the Claims of the
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`Patents,” Balassanian responded that “[t]he inventions set forth in the Claims of the
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`Patents are a matter of legal opinion and I am not in position to comment on that.”
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`Id., 41:7-12. The following testimony illustrates another example of Balassanian’s
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`incapacity and refusal to explain the meaning of the claimed inventions that he
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`allegedly conceived of:
`
`Q-What inventions set forth in the Claims of the Patents did you
`conceive of?
`A-The specific inventions detailed in the claims.
`Q-What are those inventions?
`A-They are what the claims state they are. And I am not going to
`construe claims for you.
`Q-Do you have any understanding of how the Claims of the Patents are
`construed?
`A-I do not purport to understand claim construction.
`Q-Have you read the claims?
`A-At some point, yes, I have.
`Q-And did you understand the claims when you read them?
`
`2
`
`
`
`A-My understanding of the claims is simply as a layman. I do not have
`a legal perspective on the claims.
`Q-Can you tell me what that understanding is?
`A-Not without reading the claims.
`*****
`Q-Okay. Having just read Claim 1 of the 791 patent, can you tell me
`your understanding of the invention of Claim 1?
`A-Claim 1 is, specifically, what Claim 1 says. And for me to say
`anymore than that would mean I’m construing what it means. And I am
`not going to do that. I am not a lawyer.
`
`Id., 47:6-48:24 (objections omitted). Unable to formulate an understanding of “the
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`inventions set forth in the Claims of the Patents,” Balassanian cannot competently
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`testify regarding any conception of the claimed inventions of the patents at issue, let
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`alone when such conception occurred.1 Accordingly, the Board should give
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`Balassanian’s declaration no weight.
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`
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`Instead of properly analyzing conception in connection with the claimed
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`invention, Balassanian incorrectly connected conception to the patent specification.
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`Ex.1019, 20:16-22:24; 143:6-144:14. For example, Balassanian testified that the
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`references to “invention” in his declaration were not “the invention as claimed in the
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`patent[s].” Id., 143:20-144:14. As another example, when asked “[c]an you give
`
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`1 The fact that Balassanian did not point to any particular date for his alleged
`conception further evidences the unreliability of his testimony. See Apple Inc. v.
`California Institute of Technology, IPR2017-00210, 2018WL6828779 at *6
`(P.T.A.B. Dec. 27, 2018) (rejecting swear behind and noting that “[w]hen pressed to
`establish a date, Patent Owner points only to early March dates, but does not point
`to a date by which [conception] was established”). Similarly, Balassanian could not
`even recall if he read the patents in preparing his declaration. Ex.1019, 178:11-13.
`
`3
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`
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`me a description of your invention anymore specific than that,” Balassanian testified
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`that “[a]s I mentioned, I am happy to read you the spec which will give you more
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`specific information about the invention.” Id., 22:4-11. Balassanian’s use of the
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`specification, and not the claims, to define his conception is legally defective. See,
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`e.g., Singh v. Brake, 222 F.3d 1362, 1367 (Fed.Cir. 2000) (“A conception must
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`encompass all limitations of the claimed invention”).2
`
`
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`Unsurprisingly, Balassanian did not provide a mapping between the claims
`
`and his alleged evidence of invention. Rather, Implicit relies on the declaration of
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`an expert to make such a mapping. But relying on an expert to map evidence to
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`claims does not dispense with the requirement that the patentee must prove that the
`
`inventors conceived of each and every claim element. TV Management, Inc. v.
`
`Perdiemco LLC, IPR2016-01278, 2017WL6418915 at *9 (P.T.A.B. Dec. 15, 2017)
`
`(concluding that “Patent Owner’s evidence does not show that [inventor] conceived
`
`of every element of the [claims]” because “[inventor] does not provide a claim chart
`
`or an element-by-element discussion of any claim … as compared to his evidence of
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`alleged [conception]”) (emphasis in original). Implicit simply cannot swear behind
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`because Balassanian failed to testify to conception of the actual claim limitations or
`
`provide a mapping.
`
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`2 All emphasis added herein unless otherwise noted.
`
`4
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`
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`B.
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`The Swear Behind Lacks Independent Corroboration
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`The Board should also reject Implicit’s “swear behind” because it relies solely
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`on inventor testimony and documents that have not been independently
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`corroborated. An inventor can swear behind a reference by proving he conceived of
`
`his invention before the effective filing date of the reference and was thereafter
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`diligent in reducing his invention to practice. Perfect Surgical Techniques, Inc. v.
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`Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed.Cir. 2016). It is well established,
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`however, that when a party seeks to prove conception through an inventor’s
`
`testimony the party must proffer evidence, “in addition to [the inventor’s] own
`
`statements and documents,” corroborating the inventor’s testimony. Mahurkar v.
`
`C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed.Cir. 1996). The requirement of
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`corroboration exists to prevent an inventor from “describ[ing] his actions in an
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`unjustifiably self-serving manner,” Chen v. Bouchard, 347 F.3d 1299, 1309
`
`(Fed.Cir. 2003), and “[e]ven the most credible inventor testimony is a fortiori
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`required to be corroborated by independent evidence,” Medichem, S.A. v. Rolabo,
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`S.L., 437 F.3d 1157, 1171-72 (Fed.Cir. 2006).
`
`The sufficiency of the proffered corroboration is determined by a “rule of
`
`reason” analysis. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed.Cir. 2011). Even under
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`the “rule of reason” analysis, however, the “evidence of corroboration must not
`
`5
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`
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`depend solely on the inventor himself.” Cooper v. Goldfarb, 154 F.3d 1321, 1330
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`(Fed.Cir. 1998).
`
`The Federal Circuit’s recent decision in Apator Miitors ApS v. Kamstrup A/S,
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`887 F.3d 1293 (Fed.Cir. 2018) is especially relevant here. In Apator, the patent
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`owner appealed the Board’s invalidity finding over Nielsen. Id., 1294. There, patent
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`owner attempted to swear eighteen days behind Nielsen’s filing date. Id. In support,
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`patent owner proffered a declaration from the patent’s inventor, Drachmann,
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`declaring he conceived the invention prior to Nielsen. Id. Drachmann cited to
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`emails, a presentation, an image file, and a number of drawings related to his
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`invention that were created in the month prior to the filing date. Id., 1294-95.
`
`The Board rejected the swear behind, determining:
`
`since ‘mere unsupported evidence of the alleged inventor, on an issue
`of priority, as to … conception and the time thereof, cannot be received
`as sufficient proof of … prior conception,’ even ‘accepting as true every
`statement in Mr. Drachmann’s Declaration, … [patent owner] has
`failed to produce sufficient evidence’ to swear behind Nielsen.
`Id., 1295.
`
`The Federal Circuit affirmed, reasoning that the “[patent owner] has failed to
`
`proffer any evidence of Mr. Drachmann’s conception that is not supported solely by
`
`Mr. Drachmann himself, “ explaining:
`
`The evidence proffered by Mr. Drachmann is stuck in a catch-22 of
`corroboration: Apator attempts to corroborate Mr. Drachmann’s
`testimony with the emails and the drawings, but the emails and
`drawings can only provide that corroboration with help from Mr.
`Drachmann’s testimony …. As we stated in NTP, “[i]t would be strange
`
`6
`
`
`
`indeed to say that [an inventor], who filed the ... affidavit that needs
`corroborating, can by his own testimony provide that corroboration.”
`Id., 1296-97 (citations omitted).
`
`The Federal Circuit also dismissed that the patent owner’s evidence needed to
`
`be rebutted by Petitioner: “[t]his criticism misunderstands [patent owner]’s burden
`
`of proof … which requires that [patent owner] prove Mr. Drachmann did conceive
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`… prior to Nielsen’s effective filing date, not that [petitioner] prove Mr. Drachmann
`
`did not.” Id., 1297.
`
`The present proceedings are nearly identical to Apator. Here, Implicit
`
`submitted a declaration from inventor Balassanian, who is also Implicit’s founder,
`
`sole member, and manager. Ex.2001, ¶¶2-6. Given his high-degree of interest, there
`
`is no question that Balassanian’s testimony requires independent corroboration. See
`
`ABB Inc. v. ROY-G-BIV Corp., IPR2013-00062, -00282, 2014WL1478218 at *7
`
`(P.T.A.B. Apr. 11, 2014) (rejecting swear behind based solely on inventor testimony
`
`and documents because of “the exceedingly high interest level of Mr. Brown (as
`
`inventor, founder, and CTO … ) in the outcome”); see also Mahurkar, 79 F.3d at
`
`1577 (explaining that absent the corroboration requirement, inventors would be
`
`tempted to remember facts favorable to their case “by the lure of protecting their
`
`patents”).
`
`As Drachmann did in Apator, Balassanian submitted a declaration and several
`
`documents to support his allegation of conception and RTP before Janevski.
`
`7
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`
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`Ex.2001, ¶6. Like the declaration in Apator, Balassanian’s declaration and
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`documents have not been independently corroborated.3
`
`Moreover, as in Apator, Implicit’s attempt to use documents cited in
`
`Balassanian’s declaration to corroborate Balassanian’s testimony is improper
`
`because the documents can only provide such corroboration with help from
`
`Balassanian’s testimony. See Apator, 887 F.3d at 1296-97. For example, Implicit
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`relies on the “fightclubrg.avi” file, internal BeComm literature, and certain test
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`packages to corroborate Balassanian’s testimony that he witnessed and participated
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`in demonstrations of the synchronization functionality of the Challenged Claims
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`prior to Janevski. POR, 23-25. However, these documents are silent about any
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`demonstrations actually being conducted prior to Janevski. Only through
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`Balassanian’s testimony are these documents linked to any alleged demonstrations.
`
`In fact, Implicit has not provided a single document evidencing when these alleged
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`demonstrations were conducted, who was present, or what the results were, for such
`
`demonstrations.4
`
`
`3 As explained below, Implicit’s expert declaration is ineffective.
`4 Implicit’s only cited document that even references a demonstration is Exhibit 2033
`(providing results of a demonstration involving an iPAQ). However, this document
`is dated after Janevski, and there is no indication that an iPAQ demonstration took
`place before Janevski. See Ex.2077, 31; Panduit Corp. v. Corning Optical
`Commc’ns LLC, IPR2017-01074, 2018WL4773429, at *8 (P.T.A.B. Oct. 1, 2018)
`(finding swear behind failed where evidence of prototype post-dated prior art’s date).
`
`8
`
`
`
`Further, Implicit relies on source code written by a non-inventor, Guy
`
`Carpenter, to establish conception of the invention. Ex.2019, lns. 23-25 (“Owner:
`
`Guy Carpenter”); Ex.2017 (same); Ex.2020 (same). But Implicit presents no
`
`evidence (other than Balassanian’s uncorroborated testimony) that the inventors
`
`communicated the invention to Carpenter. As such, the record is devoid of evidence
`
`that Carpenter’s work inured to the benefit of the inventors and thus the Board should
`
`not rely on the code in assessing conception and RTP. See KAYAK Software Corp.
`
`v. International Business Machines Corp., IPR2016–00608, 2017WL3425957, *6
`
`(P.T.A.B. Aug. 7, 2017) (explaining that “[i]nurement involves a claim by an
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`inventor that, as a matter of law, the acts of another person should accrue to the
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`benefit of the inventor,” in rejecting swear behind that relied on code written by a
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`non-inventor where record contained no evidence that any inventor communicated
`
`the invention to the non-inventor).
`
`Accordingly, as in Apator and Kayak, the Board should reject Implicit’s
`
`“swear behind” because Implicit has failed to proffer any evidence of Balassanian’s
`
`conception or RTP that is not supported solely by Balassanian himself.
`
`C.
`
`Implicit Misunderstands Corroboration
`
`Implicit’s argument that “the expert testimony of Dr. Hashmi[] corroborate[s]
`
`Mr. Balassanian’s testimony” misses the mark. POR, 24. Effective corroborative
`
`testimony must be based on the personal observations of an independent witness
`
`9
`
`
`
`who recognized and appreciated the claimed invention at the time the work was
`
`done. See Weaver v. Houchin, 467 F. App’x 878, 881 (Fed.Cir. 2012) (finding a
`
`witness must have “personal knowledge” for corroboration); Tavory v. NTP, Inc.,
`
`297 F. App’x 976, 979 (Fed.Cir. 2008) (explaining that evidence of corroboration
`
`may be in the form of “oral testimony of an independent witness”). Hashmi is not
`
`an independent witness, nor does he have personal knowledge of any of the
`
`underlying facts regarding the alleged conception or RTP. He is an expert hired to
`
`analyze source code and compare it to the Challenged Claims. Ex.2080, ¶¶1-3.
`
`Thus, Hashmi cannot possibly corroborate Balassanian’s testimony.5
`
`D. The Swear Behind Relies on Improperly Incorporated Material
`
`The Board should also reject Implicit’s “swear behind” because it relies on
`
`analyses not set forth in the POR itself.
`
`“A brief must make all arguments accessible to the judges, rather than ask
`
`them to play archeologist with the record.” ZTE (USA), Inc. v. Electronics and
`
`Telecommunications Research Institute, IPR2015-00028, Paper 12 at 7 (P.T.A.B.
`
`Mar. 20, 2015). Indeed, when a party fails to adequately explain its reasoning in its
`
`principal brief, and instead merely cites to a declaration or claim chart exhibit, the
`
`Board routinely finds an improper incorporation by reference. Cisco Systems, Inc.
`
`
`5 Notably, Implicit chose not to submit a declaration from Carpenter, who wrote the
`code, despite informing Sonos that Implicit represents Carpenter in connection with
`these proceedings. Ex.1021.
`
`10
`
`
`
`v. C-Cation Technologies, LLC, IPR2014-00454, Paper 12 at 9 (P.T.A.B. Aug. 29,
`
`2014) (“citing [a] Declaration to support conclusory statements that are not
`
`otherwise supported … amounts to incorporation by reference.”); IBG LLC v.
`
`Trading Technologies, Inc., CBM2016-00054, Paper 36 at 3-4 (P.T.A.B. Apr. 7,
`
`2017) (refusing to consider argument that commercial embodiment practices the
`
`claims because this analysis was set forth in expert’s claim chart and merely cited to
`
`in POR). The rule exists to prevent parties from circumventing the word limits.
`
`Avant Technology, Inc. v. Anza technology, Inc., IPR2018-00828, Paper 7 at 16
`
`(P.T.A.B. Oct. 16, 2018).
`
`Here, Implicit’s argument relies on analysis that the source code practices the
`
`Challenged Claims. But Implicit made no attempt in its POR to tie this evidence to the
`
`actual limitations of the Challenged Claims. Instead, Implicit defers to its expert
`
`declaration (Ex.2080) and accompanying claim chart (Ex.2081). See POR at 15, 25,
`
`28-31. Even the lone “claim chart” in the POR is essentially a citation lookup table
`
`(for just claim 1) that merely refers to several exhibits, such as the expert’s
`
`declaration and claim chart. As such, Implicit has improperly incorporated these
`
`arguments by reference into its POR in contravention of 37 C.F.R. §§42.6(a)(3),
`
`§42.24(b)(2). This is particularly prejudicial given Sonos’s 5,600-word limit to
`
`address Implicit’s prior-art arguments and its new swear-behind argument.
`
`11
`
`
`
`Accordingly, the Board should decline to consider the analysis Implicit improperly
`
`incorporated by reference.
`
`III.
`
`IMPLICIT’S SWEAR BEHIND IS SUBSTANTIVELY DEFECTIVE
`
`As noted above, conception requires proof that the inventors possessed every
`
`claim limitation. Likewise, actual RTP requires proof that there was performance
`
`of “a process that met all the limitations of the claim,” as well as a determination
`
`“that the invention would work for its intended purpose.” Slip Track Sys. v. Metal-
`
`Lite, Inc., 304 F.3d 1256, 1265 (Fed.Cir. 2002). Implicit’s source code fails to
`
`satisfy either standard – it does not practice every claim limitation, the evidence
`
`shows that the code did not work for its intended purpose, and Hashmi never ran the
`
`code himself to show otherwise. Ex.1020, 17:17-22; 19:10-15; 22:2-6.
`
`A. The Code Fails to Meet “Render Time”
`
`For purposes of this IPR, the parties do not dispute that “rendering time”
`
`means “a time measure of the amount of content that has already been rendered by
`
`a given rendering device,” which is consistent with the specification. Ex.1020,
`
`80:13-22; Ex.1001 2:22-23 (“[R]endering time … [is] the time represented by the
`
`amount of content that has been rendered by that rendering device.”). Under this
`
`construction, the Board should reject Implicit’s “swear behind” because the code
`
`fails to practice the “rendering time” limitations of the Challenged Claims.
`
`12
`
`
`
`As an initial matter, despite purporting to use this undisputed construction, the
`
`Hashmi Declaration makes clear that Hashmi did not actually use this construction
`
`of “rendering time” in his analysis. Indeed, Hashmi never once opined that the code
`
`tracks or uses “a time measure of the amount of content that has already been
`
`rendered by a given rendering device,” and at certain points in his Declaration,
`
`Hashmi applied a different definition of “rendering time.” Ex.2081, 11 (“[M]aster
`
`rendering time … indicates when the master device renders.”). As a result, Implicit
`
`has offered no evidence that the code tracks, sends, or adjusts rendering based on
`
`“rendering time” as the parties are construing that term.
`
`Moreover, as explained in the Chertov Declaration, Hashmi fails to identify
`
`any aspect of the code that tracks, sends, or adjusts rendering based on “a time
`
`measure of the amount of content that has already been rendered by a given
`
`rendering device.” Ex.1022, ¶¶20-57, 89-102.
`
`For instance, Hashmi contends that the IAudioClock structure in the code
`“generates a plurality of master rendering times.” Ex.2081, 2. This is incorrect.
`
`IAudioClock provides an interface to a SAMPLECLOCK structure having a Time
`variable that is written with a system time of the “master” device, which does not
`
`provide “a time measure of the amount of content that has already been rendered by
`
`[the] rendering device.” Ex.1022, ¶¶29-35, 98. To the contrary, this system time
`
`reflects the “master” device’s measure of how much time that has passed since a
`
`13
`
`
`
`start date/time that is independent of content rendering, such as January 1, 1970 at
`
`00:00:00 (for Unix) or the data/time when the operating system started (for
`
`Windows). Id., ¶34.
`
`Hashmi also contends that the clocksync bead encodes and decodes
`“master rendering times” that are sent from a “master” to “slaves”. Ex. 2081, 8-9,
`
`11. This is incorrect. The code confirms that the “master epoch” being encoded and
`
`decoded by clocksync is an adjusted system time of the “master,” which is not “a
`time measure of the amount of content that has already been rendered by [the]
`
`rendering device” for the reasons discussed above. Ex.1022, ¶¶36-43, 99.
`
`Turning to “slave rendering time,” Hashmi contends that the clocksync
`bead “maintains a rendering clock RenderClock that tracks the rendering time
`for [a] slave device.” Ex.2081, 5. This is incorrect. Like IAudioClock at the
`“master,” RenderClock provides an interface to a SAMPLECLOCK structure
`having a Time variable that is written with a system time of the “slave,” which is
`not “a time measure of the amount of content that has already been rendered by [the]
`
`rendering device.” Ex.1022, ¶¶44-49, 100.
`
`Lastly, while Hashmi contends that the audiosync bead calculates a
`“rendering time differential,” the code establishes that the MasterEpoch and
`RenderEpoch variables used by audiosync are also adjusted system times of
`the “master” and “slave,” which do not provide “a time measure of the amount of
`
`14
`
`
`
`content that has already been rendered by [the] rendering device.” Ex.1022, ¶¶50-
`
`56, 101.
`
`Thus, none of the data structures or beads identified by Hashmi practice the
`
`“rendering time” limitations of the Challenged Claims.
`
`B.
`
`The Code Does Not Synchronize Between Master and Slave
`
`The Board should reject Implicit’s swear-behind attempt for the additional
`
`reason that the code did not synchronize the rendering of content between the
`
`designated “master” and “slave” devices. Indeed, all Challenged Claims expressly
`
`require a “slave” rendering device to render content “synchronously” with a
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`“master” rendering device. Ex.1001, Cl.1, 11. Thus, Implicit must show this
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`synchronous rendering to establish conception and RTP, which Implicit failed to
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