Paper No.
`Filed: March 7, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`
`¥
`IMPLICIT, LLC,
`Patent Owner.
`
`Case No. IPR2018-00767
`Patent No. 8,942,252
`
`-
`2
`Tac
`
`3
`8
`
`cE
`zeae
`at: —
`= 2
`a”
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`
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`VRONAGRWINESBH40FHS"
`
`PATENT OWNER’S AMENDED NOTICE OF APPEAL
`
`Pursuant to 35 U.S.C. §§ 141(c) and 319 and 37 C.F.R. §§ 90.2(a) and
`
`90.3(b)(1), Patent Owner hereby provides its Notice that it appeals to the United
`
`States Court of Appeals for the Federal Circuit from the Final Written Decision
`
`entered September 16, 2019, (Paper 40), and from all underlying orders, decisions,
`
`rulings, and opinions regarding U.S. Patent No. 8,942,252 B2 (“the ’252 patent”) set
`
`forth in Inter Partes Review IPR2018-00767.
`
`
`Filed: March 7, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`
`¥
`IMPLICIT, LLC,
`Patent Owner.
`
`Case No. IPR2018-00767
`Patent No. 8,942,252
`
`-
`2
`Tac
`
`3
`8
`
`cE
`zeae
`at: —
`= 2
`a”
`
`
`
`VRONAGRWINESBH40FHS"
`
`PATENT OWNER’S AMENDED NOTICE OF APPEAL
`
`Pursuant to 35 U.S.C. §§ 141(c) and 319 and 37 C.F.R. §§ 90.2(a) and
`
`90.3(b)(1), Patent Owner hereby provides its Notice that it appeals to the United
`
`States Court of Appeals for the Federal Circuit from the Final Written Decision
`
`entered September 16, 2019, (Paper 40), and from all underlying orders, decisions,
`
`rulings, and opinions regarding U.S. Patent No. 8,942,252 B2 (“the ’252 patent”) set
`
`forth in Inter Partes Review IPR2018-00767.
`
`
`
`Case IPR2018-00767
`Patent No. 8,942,252
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the issues on appeal include,
`
`but are not limited to:
`
`1.
`
`whether the Board erred whenit found that claims 1-3, 8, 11, and 17 of the
`
`252 Patent were shownto be unpatentable under 35 U.S.C. § 103(a) as
`
`obvious in view of U.S. Patent No. 7,296,338 (“Janevski”) and Azevedo!,
`
`Janevski and Mills, Janevski and Berthaud?, and/or Janevski and Eidson‘;
`whether the Board ened whenit concluded that Janevskiis prior art to the
`
`2.
`
`°252 patent under 35 U.S.C. § 102.
`
`3.
`
`whether the Board erred whenit construed terms of the claims of the ’252
`
`patent;
`
`4.
`
`whether the February 7, 2022 Order (Paper 47), issued by Commissionerfor
`
`Patents, Andrew Hirshfeld, as the Official Performing the Functions and
`
`Duties of the Under Secretary of Commercefor Intellectual Property and
`
`Director of the United States Patent and Trademark Office, comports with
`
`the Supreme Court’s decision in United States v. Arthrex, Inc., 141 S. Ct.
`
`1 Azevedo, Fault-Tolerant Clock Synchronization for Distributed Systems with
`High Message Delay Variation, IEEE Workshop on Fault-Tolerance Par. and Dist.
`Syst., (1994) (“Azevedo”).
`2 Mills, Network Time Protocol (Version 3) Specification, Implementation and
`Analysis, Network Working Group, University of Delaware (March 1992)
`(“Mills”).
`3 Jean-Marc Berthaud, Time Synchronization Over Networks Using Convex
`Closures, IEEE/ACM Transactions on Networking (Apr. 2000) (“Berthaud”).
`4U.S. Patent No. 6,278,710 (“Eidson”).
`
`
`
`Case IPR2018-00767
`Patent No. 8,942,252
`
`1970 (2021) or the Federal Vacancies Reform Act;
`
`5.
`
`whether Commissioner for Patents, Andrew Hirschfeld, as the Official
`
`Performing the Functions and Duties of the Under Secretary of Commerce
`
`for Intellectual Property and Director of the United States Patent and
`
`Trademark Office erred when denying Patent Owner’s Request for Director
`
`Review,including application of improper procedures;
`
`6.
`
`all other issues decided adversely to Patent Ownerin any order, decision,
`
`ruling or opinion underlying or supporting the Final Written Decision (Paper
`
`40) or the Order Denying Patent Owner’s Request for Director Review
`
`(Paper 47) or any other order adversely affecting Patent Owner.
`
`Copies of the decisions being appealed are attachedto this Notice.
`
`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being filed
`
`with the Director of the United States Patent and Trademark Office, and a copy of
`
`this Notice is being concurrently filed with the Patent Trial and Appeal Board. In
`
`addition, a copy of this Notice is being filed with the Clerk’s Office for the United
`
`States Court of Appeals for the Federal Circuit via CM/ECF.°
`
`> Pursuant the United States Court of Appeals for the Federal Circuit Order dated
`
`February 28, 2022, “[n]o additional docketing fee is required for any amended
`
`notices of appeal in this matter.” Implicit, LLC, v. Sonos, Inc., Case Nos. 2020-
`
`
`
`Dated: March 7, 2022
`
`Case IPR2018-00767
`Patent No. 8,942,252
`
`By:_/Timothy P. McAnulty/
`Timothy P. McAnulty (Back-up Counsel)
`Reg. No. 56,939
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`1173, -1174, Dkt. No. 72 (Fed. Cir. Feb. 28, 2022).
`
`
`
`CERTIFICATE OF SERVICE AND FILING
`
`Case IPR2018-00767
`Patent No. 8,942,252
`
`I hereby certify that on this 7th day of March 2022,in addition to being filed
`
`and servedelectronically through the Board’s E2E System,a true and correct copy of
`
`the foregoing “PATENT OWNER’S AMENDED NOTICE OF APPEAL,” was
`
`filed and served on the Director of the United States Patent and Trademark Office by
`
`handdelivery at the following address:
`
`Office of the General Counsel
`U.S. Patent and Trademark Office
`Madison Building East, Room 10B20
`600 DulanyStreet
`Alexandria, Virginia 22314
`
`I also herebycertify that on this 7th day of March,a true and correct copy of
`
`the foregoing “PATENT OWNER’S AMENDED NOTICE OF APPEAL”was
`
`filed with the Clerk’s Office of the United States Court of Appeals for the Federal
`
`Circuit, via CM/ECF.
`
`I also hereby certify that on this 7th day of March,a true and correct copy of
`
`the foregoing “PATENT OWNER’S AMENDED NOTICE OF APPEAL,”was
`
`served electronically by emailin its entirety upon Petitioner as follows:
`
`Rory P. Shea
`shea@1s3ip.com
`Cole B. Richter
`richter@I|s3ip.com
`George I. Lee
`lee@I|s3ip.com
`Michael P. Boyea
`boyea@Is3ip.com
`
`
`
`Case IPR2018-00767
`Patent No. 8,942,252
`
`LEE SULLIVAN SHEA & SMITH LLP
`224 N.Desplaines St., Suite 250
`Chicago,IL 60661
`
`Petitioner has consented to service by electronic mail.
`
`Dated: March 7, 2022
`
`By:_/Lisa C. Hines/
`Lisa C. Hines
`Senior Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`
`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,
`
`Vv.
`
`IMPLICIT, LLC,
`Patent Owner.
`
`Case IPR2018-00767
`Patent 8,942,252 B2
`
`Before MICHELLE N. WORMMEESTER,SHEILA F. McSHANE,and
`NABEELU. 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 ofclaims 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 evidencecited by the parties, we
`
`determined that Petitioner established a reasonable likelihood that it would
`
`prevail with respect to at least one ofthe claims challenged in the Petition
`andinstituted review to determinethe patentability of the challenged claims
`
`on all grounds. Paper 8 (“‘Dec.Inst.”), 1.
`
`Subsequent to institution, Patent Ownerfiled a Patent Owner
`Response (Paper9, “PO Resp.”). Petitioner filed a Reply (Paper 17, “Pet.
`Reply”) thereto, and Patent Ownerfiled a Sur-Reply (Paper 22, “PO Sur-
`Reply”). Petitioner supportsits 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
`Ownerfiled a Responseto Petitioner’s Motion to Exclude (Paper 33) and
`Petitionerfiled a Reply in support of its Motion to Exclude (Paper 34). We
`
`address these papers below.
`Anoral hearing was held on June 17, 2019, and the hearing transcript
`
`is included in the record. Paper 39 (“Tr.”).
`
`
`
`IPR2018-00767
`Patent 8,942,252 B2
`
`Wehavejurisdiction 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. Forthe
`
`reasonsthat follow, Petitioner demonstrates by a preponderanceof the
`
`evidence that claims 1—3, 8, 11, and 17 of the ’252 Patent are unpatentable.
`
`B. Related Proceedings
`Theparties inform us that the °252 Patent is asserted in Implicit, LLC
`
`y. Sonos, Inc., No. 1:17-cv-00259-LPS (D. Del.). Pet 2; Paper 5, 2.
`
`Additionally, Patent Owneridentifies Implicit, LLC v. D&MHoldings U.S.
`
`Inc., No. 1:17-cv-00258-LPS (D. Del) as a related matter. Paper5, 2.
`
`C. The ’252 Patent
`
`The ’252 Patentis generally directed to “rendering of content at
`
`multiple rendering devices in a synchronized manner.” Ex. 1001, 1:18-19.
`
`The 252 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). Jd. 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 maybedifficult, however, because the devices may each have
`
`different time domains or system clocks that operate at slightly different
`
`frequencies. Jd. at 1:40-44. This can lead video and audio contentto
`gradually appearto be out of synchronization with each other. Jd. at 1:44—
`
`46.
`
`The °252 Patent provides a method and system for “synchronizing the
`
`rendering of content at various rendering devices.” Jd. at 2:17-18. In this
`
`
`
`IPR2018-00767
`Patent 8,942,252 B2
`
`method, “each device has a device time and a rendering time.” Jd. at 2:18—
`
`20. “The device timeis the time as indicated by a designated clock(e.g.,
`
`system clock) ofthe rendering device. The rendering timeis the time
`represented by the amountof content that has been rendered bythat
`rendering device.” Jd. at 2:20-23. For example, if a rendering deviceis
`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 wasinitialized 30 minutes
`
`before rendering began. Jd. at 2:23-32. “The synchronization system
`designates oneof the rendering devices as a master rendering device and
`designatesall other rendering devices as slave rendering devices. Each slave
`rendering device adjusts the rendering ofits content to keepit 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 madein 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. Jd. 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 impactof 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. Jd. at 4:2440.
`
`
`
`IPR2018-00767
`Patent 8,942,252 B2
`
`D. Illustrative Claim
`
`Ofthe challenged claims, claims 1 and 11 are independentclaims.
`
`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 renderinga first content
`stream; and
`
`sending, from the master rendering deviceto 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 andthefirst slave device in order to render a
`second content stream at thefirst slave device synchronously
`with the rendering ofthefirst 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 ’252 Patent on
`
`the following grounds:
`
`
`Challenged Claims
`
`
`1 [S538Tad
`
`
`
`Reference(s)
`
`
`
`
`! Janevski, U.S. Patent No. 7,269,338, issued Sept. 11, 2007 (Ex. 1007,
`“Janevski’”).
`
`
`
`IPR2018-00767
`Patent 8,942,252 B2
`
`
`
`Reference(s)
`Challenged Claims
`
`
`§ 103(a)|1-3, 8, 11, and 17 Janevski and Azevedo?
`
`
`
`§ 103(a)|1-3, 8, 11, and 17 Janevski and Mills?
`
`§ 103(a)|1-3, 8, 11, and 17 Janevski and Berthaud4
`
`
`
`
`
`§ 103(a)|1-3, 8, 11, and 17 Janevski and Eidson°
`
`
`
`
`
`
`
`
`
`Janevski and
`§ 103(a)|1-3, 8, 11, and 17
`Baumgartner®
`
`5 6
`
`I]. 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
`equivalentlevel 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 Fidson, U.S. Patent No. 6,278,710, issued Aug. 21, 2001 (Ex. 1013,
`“Fidson”).
`6 Baumgartner, U.S. Patent No. 5,642,171, issued June 24, 1997 (Ex. 1014,
`‘“Baumgartner”).
`
`
`
`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 proposedlevel of ordinary skill.
`
`See Ex. 2080 J 16. For purposesof this Decision, we adopt Petitioner’s
`proposed level of ordinary skill as it is consistent with the prior art of record
`and the relevantfield, 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 accordingto their broadest reasonable constructionin 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 ofthe broadest reasonable interpretation standard).’
`Consistent with the broadest reasonable construction, claim terms are
`
`presumedto have their ordinary and customary meaningas understood by a
`person ofordinary skill in the art in the context ofthe 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, andonly 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
`999
`to the extent necessary to resolve the controversy’”
`(quoting Vivid Techs.,
`
`7 A recent amendmentto this rule does not apply here becausethe Petition
`wasfiled on March 9, 2018, whichis prior to the November 13, 2018 change
`in the standard. See Changesto 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).
`
`
`
`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 purposesofthis
`
`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
`Ownerargues “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 timeis 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
`languageofthe claims, followed bythe specification.” Tempo Lighting Inc.
`
`
`
`IPR2018-00767
`Patent 8,942,252 B2
`
`y. Tivoli LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (citing Jn re Morris, 127
`
`F.3d 1048, 1056 (Fed. Cir. 1997)). The ’252 Patent makesclear “(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
`°252 Patent, which wetaketo be a clear definition ofthe term,is cited by
`both parties in support oftheir respective constructions. Thus, we adoptit as
`our construction of the term and construe “device time”as “the time as
`
`indicated by a designatedclock(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 othercited references.
`
`Pet. 24-26. Patent Owner argues Janevskiis not prior art to the ’252 Patent.
`PO Resp. 14. For the reasons set forth below, we are notpersuadedthat the
`inventor’s testimony is corroborated adequately, and we determine that
`
`Patent Ownerhas not metits 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 anearlier effective filing date. Ex. 1007, at [22]. The provisional
`patent application from which the ’252 Patent claimspriority wasfiled six
`days later on December 17, 2001. Ex. 1001, at [60]; Pet. 7. Patent Owner
`alleges that “[p]rior to December11, 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 providesa declaration of
`Mr. Edward Balassanian, one of the two named inventors of the ’252 Patent
`
`
`
`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 Owneralleges 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 becamethe invention of the °252 Patent. PO Resp. 19
`(citing Ex. 2001 {{§ 26-32). According to Patent Owner, the Juno project
`beganin late 2000 and Mr. Balassanian was involved asthe President and
`CEO of BeComm. PO Resp. 19 (citing Ex. 2001 4 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 “notyetfinalized how
`Juno will implement the requirement that a Media Serversession be able to
`simultaneously serve multiple concurrent Adapters and keep their playback
`
`synchronized”(Ex. 2011 at 37).
`Relying on Mr. Balassanian’s declaration, Patent Owneralleges that
`‘in the ensuing months[after the Juno project ended] Mr. Balassanian and
`Mr. Bradley conceived ofthe inventions” (PO Resp. 19-20 (citing Ex. 2001
`14 33, 42-74)), and communicated the invention to BeComm’s internal
`engineering and developmentstaff (id. at 20 (citing Ex. 2001 4 33)). Patent
`Owneralleges that Mr. Balassanian and Mr. Bradley worked with
`
`10
`
`
`
`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 Ownerrelies on BeComm
`
`source codefiles and certain internal BeComm documents. PO Resp. 20—
`
`23. Patent Owner contends the source codefiles 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 4] 37-38; Ex. 2013 at2;
`
`Ex. 2080 {J 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
`
`modulesto “achieve the best possible synchronization” (PO Resp. 21 (citing
`
`Ex. 2021 at 8)); (2) certain documentation describing the Strings Audio
`
`Player demonstrations, which Patent Owneralleges incorporated the
`functionality ofthe source code (PO Resp.22 (citing Ex. 2001 {fj 64-69,
`113-116; Exs. 2025—28, 2034)); (3) a case study that describes certain
`
`synchronization functionality that Patent Owneralleges wasprinted on
`
`December3, 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 December9, 2002, and which waseventually filed on
`December 17, 2001, as the provisional patent application to which the °252
`
`Patent claimspriority (PO Resp. 23 (citing Exs. 2037, 2077)).
`
`11
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`IPR2018-00767
`Patent 8,942,252 B2
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`b. Reduction to Practice
`
`To corroborate Mr. Balassanian’s testimony that the inventions were
`
`reducedto practice before December 11, 2001, Patent Ownerrelies
`primarily on two types of evidence. First, Patent Ownerpoints 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 94 53-60). These demonstrations involveda videofile,
`“fightclubrgb.avi,” that Patent Owner contendshas a date-modified
`timestamp of September 7, 2001. PO Resp.24 (citing Ex. 2077 at 21).
`Accordingto his testimony, Mr. Balassanian recalls the Fight Club
`demonstration operated by having a master devicesplit 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 thevideo and audio were
`synchronized with the master device. PO Resp. 24-25 (citing Ex. 2001
`
`qq 43, 58, 59).
`Second, Patent Ownerrelies on source code packages dated October
`
`and Novemberof 2001. PO Resp. 25 (citing Ex. 2031 at 2; Ex. 2032 at2;
`
`Ex. 2034 at 2). Dr. Hashmi opinesthat the source code wouldpractice 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 codefiles
`
`that Dr. Hashmi analyzed are dated November 1 and 15 of 2001. Ex. 2080
`
`q{ 62-104.
`Based on the dates of the Fight Club demonstration files and the
`
`source code files, and the fact that Dr. Hashmitestifies that the source code
`
`12
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`IPR2018-00767
`Patent 8,942,252 B2
`
`practices the limitationsof the challenged claims, Patent Owner contends
`that the inventions were reducedto practice before Janevski’s December11,
`
`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 testimonyis not independently
`corroborated (Pet. Reply 5-8); (3) that Patent Ownerrelies on source code
`written by non-inventor Mr. Carpenterto establish conception and reduction
`to practice of the invention without evidencethat such reductionto practice
`inures to the benefit of the named inventors; and (4) that the source code
`
`upon which Patent Ownerrelies 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 testimonyis 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
`
`13
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`IPR2018-00767
`Patent 8,942,252 B2
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`Petitioner arguesis 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 documentslinked to any alleged demonstrations. Pet.
`Reply 8. Petitioner argues that the documentsalone do not evidence that
`any demonstrations actually took place, whenthey allegedly took place, who
`waspresent, and what the results of the demonstrations were. Pet. Reply 8.
`Petitioner argues that Patent Ownerrelies 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
`
`showingthat 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 codefails to
`practice every limitation of the claim and thus cannotberelied upon to show
`conception and reduction to practice of the invention. Pet. Reply 12.
`Specifically, Petitioner argues the source code fails to meetthe “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 masterand slave
`and that the documentation showsthat the system’s goal was to synchronize
`
`between twoslaves instead. Pet. Reply 15—20.
`
`14
`
`
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`IPR2018-00767
`Patent 8,942,252 B2
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`3. Analysis
`“In an inter partes review, the burdenof persuasion is on the
`petitioner to prove ‘unpatentability by a preponderanceof 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. Jd.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 December11,
`2001, which is prior to the December 17, 2001 date of U.S. Provisional
`Application No. 60/341,574, to which the ’252 Patent claimspriority. This
`difference in dates shifts the burden of production to Patent Ownerto
`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 showeither an earlier
`
`reduction to practice, or an earlier conception followed bya 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 mindofthe inventor, of a definite and permanentidea of the complete
`
`and operative invention,asit is thereafter to be applied in practice.” Cooper
`v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). Conception is complete
`whenthe 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
`
`15
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`IPR2018-00767
`Patent 8,942,252 B2
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`performsa processthat satisfies every elementof the claim at issue, and (2)
`the embodimentor process operates for its intended purpose. See Eatonv.
`
`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.
`Inurementinvolves a claim by an inventorthat, 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 personrelies 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 ofthe
`utility of an invention caninure 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 wasthefirst to reduce the invention to practice and also
`without showing that she wasthefirst 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 someoneelse’s reduction to
`practice inure to the inventor’s benefit. Genentech, 220 F.2d at 1354.
`
`16
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`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 whichall pertinent evidence is examined. Jn re
`
`NTP, 654 F.3d at 1291. Even u
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