Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 40
`Entered: September 16, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`v.
`IMPLICIT, LLC,
`Patent Owner.
`
`Case IPR2018-00767
`Patent 8,942,252 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 40
`Entered: September 16, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`v.
`IMPLICIT, LLC,
`Patent Owner.
`
`Case IPR2018-00767
`Patent 8,942,252 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2018-00767
`Patent 8,942,252 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Sonos, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute
`an inter partes review of claims 1–3, 8, 11, and 17 (the “challenged claims”)
`of U.S. Patent No. 8,942,252 B2 (Ex. 1001, “the ’252 Patent”). Implicit,
`LLC (“Patent Owner”) timely filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). On September 19, 2018, upon consideration of the
`Petition, the Preliminary Response, and the evidence cited by the parties, we
`determined that Petitioner established a reasonable likelihood that it would
`prevail with respect to at least one of the claims challenged in the Petition
`and instituted review to determine the patentability of the challenged claims
`on all grounds. Paper 8 (“Dec. Inst.”), 1.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 9, “PO Resp.”). Petitioner filed a Reply (Paper 17, “Pet.
`Reply”) thereto, and Patent Owner filed a Sur-Reply (Paper 22, “PO Sur-
`Reply”). Petitioner supports its challenge with the Declaration and Rebuttal
`Declaration of Roman Chertov, Ph.D. (Exs. 1009, 1022). Patent Owner
`supports its Response with the Declarations of Edward Balassanian
`(Ex. 2001), and Atif Hashmi, Ph.D. (Ex. 2080).
`Further, Petitioner filed a Motion to Exclude. Paper 30. Patent
`Owner filed a Response to Petitioner’s Motion to Exclude (Paper 33) and
`Petitioner filed a Reply in support of its Motion to Exclude (Paper 34). We
`address these papers below.
`An oral hearing was held on June 17, 2019, and the hearing transcript
`is included in the record. Paper 39 (“Tr.”).
`
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`IPR2018-00767
`Patent 8,942,252 B2
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
`addresses issues and evidence raised during the inter partes review. For the
`reasons that follow, Petitioner demonstrates by a preponderance of the
`evidence that claims 1–3, 8, 11, and 17 of the ʼ252 Patent are unpatentable.
`
`B. Related Proceedings
`The parties inform us that the ʼ252 Patent is asserted in Implicit, LLC
`v. Sonos, Inc., No. 1:17-cv-00259-LPS (D. Del.). Pet 2; Paper 5, 2.
`Additionally, Patent Owner identifies Implicit, LLC v. D&M Holdings U.S.
`Inc., No. 1:17-cv-00258-LPS (D. Del) as a related matter. Paper 5, 2.
`
`C. The ʼ252 Patent
`The ʼ252 Patent is generally directed to “rendering of content at
`multiple rendering devices in a synchronized manner.” Ex. 1001, 1:18–19.
`The ʼ252 Patent explains that a multimedia presentation may include
`different types of content, such as video, audio, and text, that are rendered on
`different devices (e.g., a video display and a stereo system). Id. at 1:23–25.
`However, their rendering often needs to occur in a synchronized manner
`because the video, audio, and text content may correspond with each other.
`Id. at 1:25–31. Rendering content on different devices in a synchronized
`manner may be difficult, however, because the devices may each have
`different time domains or system clocks that operate at slightly different
`frequencies. Id. at 1:40–44. This can lead video and audio content to
`gradually appear to be out of synchronization with each other. Id. at 1:44–
`46.
`
`The ʼ252 Patent provides a method and system for “synchronizing the
`rendering of content at various rendering devices.” Id. at 2:17–18. In this
`
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`IPR2018-00767
`Patent 8,942,252 B2
`method, “each device has a device time and a rendering time.” Id. at 2:18–
`20. “The device time is the time as indicated by a designated clock (e.g.,
`system clock) of the rendering device. The rendering time is the time
`represented by the amount of content that has been rendered by that
`rendering device.” Id. at 2:20–23. For example, if a rendering device is
`displaying 30 frames a second, then after 450 frames have been rendered,
`the rendering time will be 15 seconds. The corresponding device time may
`be 30 minutes and 15 seconds, if the device was initialized 30 minutes
`before rendering began. Id. at 2:23–32. “The synchronization system
`designates one of the rendering devices as a master rendering device and
`designates all other rendering devices as slave rendering devices. Each slave
`rendering device adjusts the rendering of its content to keep it in
`synchronization with the master rendering device.” Id. at 2:33–38. The
`master rendering device sends messages with its device and rendering time
`to the slave devices, which determine whether they are synchronized with
`the master device and determine the differential if they are not synchronized.
`Id. at 2:38–43. This determination can be made in a variety of ways that
`involve comparisons between the rendering times of the master and slave
`and the device times of the master and slave. Id. at 2:46–65. The time
`differentials between master device time and slave device time can be
`smoothed using various techniques such as averaging the last few time
`differentials using a decaying function to limit the impact of the oldest time
`differential. Id. at 7:16–26. Once the device and rendering time differentials
`are known, the slave rendering devices may adjust their rendering of content
`as appropriate to compensate for the difference. Id. at 4:24–40.
`
`4
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`IPR2018-00767
`Patent 8,942,252 B2
`
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 11 are independent claims.
`Claims 2, 3, and 8 depend from claim 1 and claim 17 depends from
`claim 11.
`Claim 1, reproduced below, is illustrative:
`1.
`A method comprising:
`a master rendering device rendering a first content
`stream; and
`sending, from the master rendering device to a first one
`of a plurality of slave devices, a plurality of master rendering
`times indicative of statuses of the rendering the first content
`stream at the master rendering device at different times;
`wherein the first slave device is configured to smooth a
`rendering time differential that exists between the master
`rendering device and the first slave device in order to render a
`second content stream at the first slave device synchronously
`with the rendering of the first content stream at the master
`rendering device, wherein smoothing the rendering time
`differential includes calculations using the plurality of master
`rendering times.
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–3, 8, 11, and 17 of the ʼ252 Patent on
`the following grounds:
`
`Challenged Claims
`Ground Basis
`1
`§ 103(a) 1–3, 8, 11, and 17
`
`Reference(s)
`Janevski1
`
`
`1 Janevski, U.S. Patent No. 7,269,338, issued Sept. 11, 2007 (Ex. 1007,
`“Janevski”).
`
`5
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`IPR2018-00767
`Patent 8,942,252 B2
`
`Challenged Claims
`Ground Basis
`2
`§ 103(a) 1–3, 8, 11, and 17
`3
`§ 103(a) 1–3, 8, 11, and 17
`4
`§ 103(a) 1–3, 8, 11, and 17
`5
`§ 103(a) 1–3, 8, 11, and 17
`6
`§ 103(a) 1–3, 8, 11, and 17
`
`
`
`Reference(s)
`Janevski and Azevedo2
`Janevski and Mills3
`Janevski and Berthaud4
`Janevski and Eidson5
`Janevski and
`Baumgartner6
`
`II. DISCUSSION
`A. Level of Ordinary Skill
`Petitioner proposes that a person of ordinary skill in the art “would
`have the equivalent of a four-year degree from an accredited institution in
`computer science, computer engineering, electrical engineering, or the
`equivalent, and approximately 2-4 years of professional experience in the
`fields of networked systems and networked-based applications, or an
`equivalent level of skill and knowledge.” Pet. 24 n.2. Patent Owner does
`
`
`2 Azevedo, Fault-Tolerant Clock Synchronization for Distributed Systems
`with High Message Delay Variation, IEEE Workshop on Fault-Tolerance
`Par. and Dist. Syst., (1994) (Ex. 1010, “Azevedo”).
`3 Mills, Network Time Protocol (Version 3) Specification, Implementation
`and Analysis, Network Working Group, University of Delaware (March
`1992) (Ex. 1011, “Mills”).
`4 Jean-Marc Berthaud, Time Synchronization Over Networks Using Convex
`Closures, IEEE/ACM Transactions on Networking (Apr. 2000) (Ex. 1012,
`“Berthaud”).
`5 Eidson, U.S. Patent No. 6,278,710, issued Aug. 21, 2001 (Ex. 1013,
`“Eidson”).
`6 Baumgartner, U.S. Patent No. 5,642,171, issued June 24, 1997 (Ex. 1014,
`“Baumgartner”).
`
`6
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`IPR2018-00767
`Patent 8,942,252 B2
`not provide an alternative proposal for the level of ordinary skill and
`Dr. Hashmi does not offer an opinion on a proposed level of ordinary skill.
`See Ex. 2080 ¶ 16. For purposes of this Decision, we adopt Petitioner’s
`proposed level of ordinary skill as it is consistent with the prior art of record
`and the relevant field, and also reflects the necessary level and type of
`education and practical experience for one of ordinary skill in the art.
`
`B. Claim Interpretation
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2017); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).7
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Only terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(stating that “we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’” (quoting Vivid Techs.,
`
`7 A recent amendment to this rule does not apply here because the Petition
`was filed on March 9, 2018, which is prior to the November 13, 2018 change
`in the standard. See Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R.
`§ 42.100(b) effective November 13, 2018).
`
`7
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`IPR2018-00767
`Patent 8,942,252 B2
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))), cert.
`denied, 138 S. Ct. 1695 (Apr. 30, 2018).
`Petitioner proposes constructions for the following terms: “device
`time,” “rendering time,” sending/receiving “a plurality of master rendering
`times,” “smooth a rendering time differential,” “determining a smoothed
`rendering time differential,” and “window.” Pet. 18–23. Patent Owner
`explicitly disputes the construction of “device time” in its Response, but
`does not otherwise raise any specific, substantive objections to Petitioner’s
`other proposed constructions. See PO Resp. 13–14, 38–39. We determine
`that other than “device time,” an explicit construction of the claim terms for
`which Petitioner proposes constructions is not necessary for purposes of this
`Decision.
`
`1. “device time”
`Petitioner proposes the term “device time” should be construed as “a
`time indicated by any clock of a given rendering device.” Pet. 18. Patent
`Owner argues “device time” should be construed as a “time indicated by a
`designated clock of the [master/slave] device.” PO Resp. 39. Patent Owner
`argues this construction “is sourced directly from the specification,” which,
`according to Patent Owner, states that “[t]he device time is the time as
`indicated by a designated clock (e.g., system clock) of the rendering device.”
`Id. Petitioner argues that, under the broadest reasonable interpretation
`standard, there is no difference in scope between the two proposed
`constructions because, even under Patent Owner’s construction, there is no
`limitation on what kind of clock can be “a designated clock.” Pet. Reply 26.
`“In claim construction, [the Federal Circuit] gives primacy to the
`language of the claims, followed by the specification.” Tempo Lighting Inc.
`
`8
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`IPR2018-00767
`Patent 8,942,252 B2
`v. Tivoli LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (citing In re Morris, 127
`F.3d 1048, 1056 (Fed. Cir. 1997)). The ʼ252 Patent makes clear “[t]he
`device time is the time as indicated by a designated clock (e.g., system
`clock) of the rendering device.” Ex. 1001, 2:20–21. This statement from the
`ʼ252 Patent, which we take to be a clear definition of the term, is cited by
`both parties in support of their respective constructions. Thus, we adopt it as
`our construction of the term and construe “device time” as “the time as
`indicated by a designated clock (e.g., system clock) of the rendering device.”
`
`C. Antedating Janevski
`Petitioner argues claims 1–3, 8, 11, and 17 would have been obvious
`over Janevski and over Janevski combined with the other cited references.
`Pet. 24–26. Patent Owner argues Janevski is not prior art to the ʼ252 Patent.
`PO Resp. 14. For the reasons set forth below, we are not persuaded that the
`inventor’s testimony is corroborated adequately, and we determine that
`Patent Owner has not met its burden of producing sufficient evidence to
`antedate Janevski.
`
`1. Patent Owner’s Contentions
`The Janevski reference was filed on December 11, 2001 and does not
`claim an earlier effective filing date. Ex. 1007, at [22]. The provisional
`patent application from which the ʼ252 Patent claims priority was filed six
`days later on December 17, 2001. Ex. 1001, at [60]; Pet. 7. Patent Owner
`alleges that “[p]rior to December 11, 2001, . . . the inventors conceived of
`the inventions of the Challenged Claims, and those inventions were reduced
`to practice in time to remove Janevski as a prior art reference.” PO Resp.
`14. In support of this contention, Patent Owner provides a declaration of
`Mr. Edward Balassanian, one of the two named inventors of the ʼ252 Patent
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`IPR2018-00767
`Patent 8,942,252 B2
`(Ex. 2001), certain internal documents from BeComm (the predecessor of
`Patent Owner, Implicit, LLC), and the declaration of Patent Owner’s expert,
`Dr. Hashmi (Ex. 2080). Patent Owner alleges that the internal BeComm
`documents and Dr. Hashmi’s expert declaration corroborate Mr.
`Balassanian’s testimony that he and Mr. Bradley (the other named inventor)
`conceived of the inventions prior to December 11, 2001, and timely reduced
`them to practice. PO Resp. 15.
`
`a. Conception
`In its Response, Patent Owner describes the “Juno” project as the
`genesis of what later became the invention of the ʼ252 Patent. PO Resp. 19
`(citing Ex. 2001 ¶¶ 26–32). According to Patent Owner, the Juno project
`began in late 2000 and Mr. Balassanian was involved as the President and
`CEO of BeComm. PO Resp. 19 (citing Ex. 2001 ¶ 32; Ex. 2011 at 8). Early
`Juno documents show that as of December 2000, BeComm believed “true
`synchronization [was] an unsolved computer science problem” (Ex. 2009 at
`15) and that as of February of 2001, BeComm had “not yet finalized how
`Juno will implement the requirement that a Media Server session be able to
`simultaneously serve multiple concurrent Adapters and keep their playback
`synchronized” (Ex. 2011 at 37).
`Relying on Mr. Balassanian’s declaration, Patent Owner alleges that
`“in the ensuing months [after the Juno project ended] Mr. Balassanian and
`Mr. Bradley conceived of the inventions” (PO Resp. 19–20 (citing Ex. 2001
`¶¶ 33, 42–74)), and communicated the invention to BeComm’s internal
`engineering and development staff (id. at 20 (citing Ex. 2001 ¶ 33)). Patent
`Owner alleges that Mr. Balassanian and Mr. Bradley worked with
`
`10
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`IPR2018-00767
`Patent 8,942,252 B2
`BeComm’s Engineering Master, Mr. Guy Carpenter, to implement the
`inventions. Id.
`To corroborate Mr. Balassanian’s testimony that Mr. Balassanian and
`Mr. Bradley conceived of the invention, Patent Owner relies on BeComm
`source code files and certain internal BeComm documents. PO Resp. 20–
`23. Patent Owner contends the source code files were initially checked in on
`September 10, 2001, and fully operational by the end of October 2001, as
`indicated by BeComm’s Concurrent Version System (“CVS”) repository
`check-in dates. PO Resp. 20–21 (citing Ex. 2001 ¶¶ 37–38; Ex. 2013 at 2;
`Ex. 2080 ¶¶ 39–49).
`In addition to the source code, Patent Owner highlights four internal
`BeComm documents to corroborate Mr. Balassanian’s testimony that he and
`Mr. Bradley conceived of the invention prior to December 11, 2001:
`(1) “Using Strings to Compose Applications from Reusable Components”
`dated October 2001, which describes a system using clock synchronization
`modules to “achieve the best possible synchronization” (PO Resp. 21 (citing
`Ex. 2021 at 8)); (2) certain documentation describing the Strings Audio
`Player demonstrations, which Patent Owner alleges incorporated the
`functionality of the source code (PO Resp. 22 (citing Ex. 2001 ¶¶ 64–69,
`113–116; Exs. 2025–28, 2034)); (3) a case study that describes certain
`synchronization functionality that Patent Owner alleges was printed on
`December 3, 2001 (PO Resp. 23 (citing Ex. 2029 at 5–7; Ex. 2077 at 28–
`30)); and (4) “synchronization.doc,” which Patent Owner contends was
`completed on December 9, 2002, and which was eventually filed on
`December 17, 2001, as the provisional patent application to which the ʼ252
`Patent claims priority (PO Resp. 23 (citing Exs. 2037, 2077)).
`
`11
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`IPR2018-00767
`Patent 8,942,252 B2
`
`b. Reduction to Practice
`To corroborate Mr. Balassanian’s testimony that the inventions were
`reduced to practice before December 11, 2001, Patent Owner relies
`primarily on two types of evidence. First, Patent Owner points to specific
`demonstrations, known internally as the “Fight Club demonstrations,” of the
`synchronization functionality that Mr. Balassanian witnessed and
`participated in prior to December 11, 2001. PO Resp. 24–25 (citing
`Ex. 2001 ¶¶ 53–60). These demonstrations involved a video file,
`“fightclubrgb.avi,” that Patent Owner contends has a date-modified
`timestamp of September 7, 2001. PO Resp. 24 (citing Ex. 2077 at 21).
`According to his testimony, Mr. Balassanian recalls the Fight Club
`demonstration operated by having a master device split the video and audio
`of the fightclubrgb.avi video file, play and render the video, and send the
`video and audio to separate slave devices where the video and audio were
`synchronized with the master device. PO Resp. 24–25 (citing Ex. 2001
`¶¶ 43, 58, 59).
`Second, Patent Owner relies on source code packages dated October
`and November of 2001. PO Resp. 25 (citing Ex. 2031 at 2; Ex. 2032 at 2;
`Ex. 2034 at 2). Dr. Hashmi opines that the source code would practice the
`challenged claims when run and would operate in the way Mr. Balassanian
`recalls, i.e. by splitting video and audio and synchronizing between master
`and slave devices. PO Resp. 25–26 (citing Ex. 2082). The source code files
`that Dr. Hashmi analyzed are dated November 1 and 15 of 2001. Ex. 2080
`¶¶ 62–104.
`Based on the dates of the Fight Club demonstration files and the
`source code files, and the fact that Dr. Hashmi testifies that the source code
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`IPR2018-00767
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`practices the limitations of the challenged claims, Patent Owner contends
`that the inventions were reduced to practice before Janevski’s December 11,
`2001 priority date. PO Resp. 19–28.
`
`2. Petitioner’s Arguments
`Petitioner presents several arguments against Patent Owner’s attempt
`to swear behind Janevski’s priority date, including (1) that Mr.
`Balassanian’s testimony has not addressed the actual claim limitations (Pet.
`Reply 1–4); (2) that Mr. Balassanian’s testimony is not independently
`corroborated (Pet. Reply 5–8); (3) that Patent Owner relies on source code
`written by non-inventor Mr. Carpenter to establish conception and reduction
`to practice of the invention without evidence that such reduction to practice
`inures to the benefit of the named inventors; and (4) that the source code
`upon which Patent Owner relies fails to practice each and every claim
`limitation. Pet. Reply 9.
`Petitioner argues Mr. Balassanian’s testimony regarding conception
`should be given no weight because Mr. Balassanian failed at this deposition
`to provide his understanding of the meaning of the claim limitations.
`Without providing such testimony, Petitioner argues, Mr. Balassanian cannot
`competently testify regarding any conception of the claimed inventions. Pet.
`Reply 2–3 (citing Ex. 1019, 20:16–22:24, 26:5–16, 36:3–19, 39:18–41:12,
`44:22–45:3, 47:6–49:20, 50:11–22, 51:22–52:4, 53:1–24, 165:9–166:10).
`Petitioner further argues that Mr. Balassanian’s testimony is not
`independently corroborated because the documents cited in the declaration
`can only provide corroboration with the help of Mr. Balassanian’s
`testimony, leading to a circular problem that the Federal Circuit criticized in
`Apator Miitors ApS v. Kamstrup A/S, 887 F.3d 1293 (Fed. Cir. 2018), a case
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`Petitioner argues is particularly relevant to the facts at hand here. Pet. Reply
`6–8. For example, Petitioner argues that documents related to the Fight
`Club demonstrations “are silent about any demonstrations actually being
`conducted prior to Janevski” and that only through Mr. Balassanian’s
`testimony are the documents linked to any alleged demonstrations. Pet.
`Reply 8. Petitioner argues that the documents alone do not evidence that
`any demonstrations actually took place, when they allegedly took place, who
`was present, and what the results of the demonstrations were. Pet. Reply 8.
`Petitioner argues that Patent Owner relies on source code written by a
`non-inventor, Mr. Guy Carpenter, to establish conception of the invention
`but that no evidence, other than Mr. Balassanian’s testimony, is presented
`showing that the inventors communicated the invention to Mr. Carpenter.
`Pet. Reply 9 (citing Exs. 2019, 2017, 2020 (each of which lists Mr.
`Carpenter as the owner)). Thus, Petitioner argues, the record is devoid of
`evidence that Mr. Carpenter’s work inured to the benefit of the inventors.
`Pet. Reply 9.
`Finally, Petitioner argues that Patent Owner’s source code fails to
`practice every limitation of the claim and thus cannot be relied upon to show
`conception and reduction to practice of the invention. Pet. Reply 12.
`Specifically, Petitioner argues the source code fails to meet the “render
`time” limitation because the portions of the source code that Patent Owner
`relies upon for teaching this limitation actually refer to the system time of
`the master device rather than the rendering time. Pet. Reply 13. Petitioner
`also argues the source code does not synchronize between master and slave
`and that the documentation shows that the system’s goal was to synchronize
`between two slaves instead. Pet. Reply 15–20.
`
`14
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`
`3. Analysis
`“In an inter partes review, the burden of persuasion is on the
`petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35
`U.S.C. § 316(e), and that burden never shifts to the patentee.” Dynamic
`Drinkware, LLC v. National Geographics, Inc., 800 F.3d 1375, 1378 (Fed.
`Cir. 2015). The burden of production, however, is a shifting burden. Id. at
`1379. Thus, Petitioner bears the burden of persuasion, by a preponderance
`of the evidence, that the challenged claims are unpatentable. 35 U.S.C.
`§ 316(e). Petitioner has proffered Janevski, which presumptively constitutes
`prior art under 35 U.S.C. § 102(e), because it was filed on December 11,
`2001, which is prior to the December 17, 2001 date of U.S. Provisional
`Application No. 60/341,574, to which the ʼ252 Patent claims priority. This
`difference in dates shifts the burden of production to Patent Owner to
`produce evidence supporting a date of invention before Janevski’s filing
`date. See Dynamic Drinkware, 800 F.3d at 1379.
`“To antedate . . . an invention, a party must show either an earlier
`reduction to practice, or an earlier conception followed by a diligent
`reduction to practice.” Purdue Pharma L.P. v. Boehringer Ingelheim
`GmbH, 237 F.3d 1359, 1365 (Fed. Cir. 2001). “Conception is the formation,
`in the mind of the inventor, of a definite and permanent idea of the complete
`and operative invention, as it is thereafter to be applied in practice.” Cooper
`v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). Conception is complete
`when the idea is so clearly defined in the inventor’s mind that only ordinary
`skill is necessary to reduce the invention to practice. Burroughs Wellcome
`Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). Actual
`reduction to practice occurs when: (1) a party constructs an embodiment or
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`performs a process that satisfies every element of the claim at issue, and (2)
`the embodiment or process operates for its intended purpose. See Eaton v.
`Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000).
`Acts by others working explicitly or implicitly at the inventor’s
`request can inure to an inventor’s benefit. Cooper, 154 F.3d at 1332.
`Inurement involves a claim by an inventor that, as a matter of law, the acts
`of another person should accrue to the benefit of the inventor. Genentech,
`Inc. v. Chiron Corp., 220 F.3d 1345, 1353 (Fed. Cir. 2000). However, when
`a person relies on the activities of others to show actual reduction to
`practice, proof of conception is relevant to inurement. See Sensio, Inc. v.
`Select Brands, Inc., IPR2013-00580, Paper 31 at 10–15 (PTAB Feb. 9,
`2015) (Final Written Decision); see also NFC Tech., LLC v. Matal, 871 F.3d
`1367, 1371–72 (Fed. Cir. 2017). In Genentech, in the context of deciding
`whether the reduction to practice inured to the inventor’s benefit, the Federal
`Circuit held that the inventor first must show that she conceived the
`invention. Genentech, 220 F.3d at 1354 (“[W]e glean at least three
`requirements that must be met before a non-inventor’s recognition of the
`utility of an invention can inure to the benefit of the inventor. First, the
`inventor must have conceived of the invention.”). This requirement makes
`sense; otherwise, a person could antedate a prior art reference without
`showing that she was the first to reduce the invention to practice and also
`without showing that she was the first to conceive the invention, contrary to
`the requirements for antedating an invention. See Purdue Pharma, 237 F.3d
`at 1365. Thus, Patent Owner must show that the inventor conceived the
`subject matter of the invention in order to have someone else’s reduction to
`practice inure to the inventor’s benefit. Genentech, 220 F.2d at 1354.
`
`16
`
`
`
`IPR2018-00767
`Patent 8,942,252 B2
`It is well established that when a party seeks to prove conception
`through an inventor’s testimony, the party must proffer independent
`evidence corroborating the inventor’s testimony. Cooper, 154 F.3d at 1330.
`To be “independent,” the corroborating evidence must be evidence other
`than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed.
`Cir. 2011). The sufficiency of the proffered corroboration is determined by
`a “rule of reason” analysis in which all pertinent evidence is examined. In re
`NTP, 654 F.3d at 1291. Even under the “rule of reason” analysis, however,
`the “evidence of corroboration must not depend solely on the inventor
`himself.” Cooper, 154 F.3d at 1321; see also Hahn v. Wong, 892 F.2d 1028,
`1033 (Fed. Cir. 1989) (corroborating evidence must be “independent of
`information received from the inventor”).
`Petitioner argues that because Mr. Guy Carpenter, a non-inventor,
`authored the source code relied upon to show conception and reduction to
`practice, Patent Owner must show that Mr. Carpenter’s actions inure to the
`benefit of the inventors. Pet. Reply 9. In order to do so, Patent Owner must
`show that the inventors conceived of the invention.
`Mr. Balassanian testifies that:
`Around the time of the Juno project (and after the project
`for Intel went on hold), I contemplated how to achieve the best-
`possible synchronization of content across multiple devices as
`we continued our work. Mr. Bradley and I solved the
`synchronization problem and conceived the inventions set forth
`in the Claims of the Patents. We then began working on the
`implementation of the inventions thereafter, as detailed below.
`We communicated those inventions to BeComm’s internal
`engineering and development staff to reduce them to practice.
`We worked primarily with Guy Carpenter, an Engineering
`Master at BeComm, to implement the inventions, as I describe
`below.
`
`17
`
`
`
`IPR2018-00767
`Patent 8,942,252 B2
`Ex. 2001 ¶ 33. Thus, Mr. Balassanian testifies that (1) he and Mr. Bradley
`conceived of the invention, (2) he and Mr. Bradley then communicated the
`inventions to BeComm’s staff, including to Mr. Carpenter, and (3) he and
`Mr. Bradley worked with BeComm’s staff, including Mr. Carpenter, to
`reduce the inventions to practice. If properly corroborated, this testimony
`would show that Mr. Carpenter’s work in reducing the invention to practice
`inures to the benefit of Mr. Balassanian and Mr. Bradley. However, as we
`explain below, Patent Owner has not carried its burden of production to
`present sufficient evidence to independently corroborate Mr. Balassanian’s
`testimony that he and Mr. Bradley conceived of the invention and
`communicated it to BeComm’s staff.
`Initially, we note Patent Owner does not provide a specific date on
`which Mr. Balassanian or Mr. Bradley conceived of the invention. Instead,
`Patent Owner presents evidence spanning a time period of roughly a year as
`support for the argument that conception occurred before the December 11,
`2001 priority date of Janevski. This evidence includes internal BeComm
`documents, evidence of audio and video demonstrations that allegedly show
`the synchronization technology, and BeComm source code modules that
`Patent Owner contends practice the claim limitations. PO Resp. 19–29.
`However, as discussed below, none of this evidence supports the contention
`that it was Mr. Balassanian and/or Mr. Bradley who conceived of the
`invention and subsequently communicated the invention to Mr. Carpenter.
`We start with evidence related to the Juno project, which Patent
`Owner argues was the “genesis of what ultimately became the
`synchronization technology.” PO Resp. 19. We note that the two primary
`documents related to the Juno project relied upon by Patent Owner show the
`
`18
`
`
`
`IPR2018-00767
`Patent 8,942,252 B2
`invention had not yet been conceived during the December 2000 to February
`2001 time frame when the project was active. For example, the “Juno Phase
`0 Document,” which lists Mr. Balassanian, Mr. Bradley, and Mr. Carpenter
`as “Document Contributors” (Ex. 2009 at 5), states that “[b]oth Jupiter
`[codename for Intel] and BeComm recognize that true synchronization is an
`unsolved computer science problem, but a best effort will be made in this
`regard” (Ex. 2009 at 15). The “Juno: Phase 1” document also lists Mr.
`Balassanian, Mr. Bradley, and Mr. Carpenter as “Document Contributors”
`(Ex. 2011 at 8), and states “[w]e have not yet finalized how Juno will
`implement the requirement that a Media Server session be able to
`simultaneously serve multiple concurrent Adapters and keep their playback
`synchronized.” Ex. 2011 at 37. These documents make clear that a
`“permanent idea of the complete and operative invention” had not yet been
`formulated during this time period. See Cooper, 154 F.3d at 1327.
`The next document relied upon is titled “Using Strings to Compose
`Applications from Reusable Components.” This document, dated October 4,
`2001, does not list either of the two inventors as authors and only names
`“BeComm Corporation” as the source of the document. Ex. 2021 at 1.
`Mr. Bala
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