Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Entered: November 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01081
`Patent 9,445,251 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Entered: November 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01081
`Patent 9,445,251 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2018-01081
`Patent 9,445,251 B2
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`
`I. INTRODUCTION
`
`Google LLC (“Petitioner”) filed a request for inter partes review of
`claims 1–2, 4–6, 8, 10, 12, 22–24, 27, 29, 31, 32, and 35 (the “challenged
`claims”) of U.S. Patent No. 9,445,251 B2 (Ex. 1001, “the ’251 patent”).
`Paper 2 (“Pet.”). AGIS Software Development, LLC (“Patent Owner”) filed
`a Preliminary Response. Paper 6 (“Prelim. Resp.”). Petitioner filed a Reply
`to the Preliminary Response. Paper 9 (“Reply”).
`Under 35 U.S.C. § 314, an inter partes review must not be instituted
`“unless . . . the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon
`considering the evidence presented and the arguments made, we determine
`that Petitioner has not demonstrated a reasonable likelihood that it would
`prevail in showing the unpatentability of at least one of the challenged
`claims. Accordingly, we do not institute an inter partes review.
`
`A. Related Proceedings
`Petitioner advises that it has filed petitions for inter partes review of
`the ’251 patent in IPR2018-01082, IPR2018-01083, and IPR2018-01084.
`Pet. 2–3. Petitioner also advises that the ’251 patent is the subject of the
`following civil actions: AGIS Software Development LLC v. Apple Inc., No.
`2:17-cv-00516-JRG (E.D. Tex.); AGIS Software Development LLC v.
`Huawei Device USA Inc. et al., No. 2:17-cv-00513 (E.D. Tex.); AGIS
`Software Development LLC v. LG Electronics, Inc., No. 2:17-cv-00515
`(E.D. Tex.); AGIS Software Development LLC v. ZTE Corporation et al.,
`No. 2:17-cv-00517 (E.D. Tex.); AGIS Software Development LLC v. HTC
`Corporation, No. 2:17-cv-00514 (E.D. Tex.). Pet. 3–4.
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`Patent Owner acknowledges the same proceedings, and identifies the
`following matters concerning the ’251 patent: IPR2018-00817; IPR2018-
`00818; IPR2018-00819; IPR2018-00821; IPR2018-01079; IPR2018-01080;
`IPR2018-01082; IPR2018-01083; IPR2018-01084; IPR2018-01085;
`IPR2018-01086; IPR2018-01087; and IPR2018-01088.1 Paper 5, 2–4.
`
`B. The ’251 Patent
`The ’251 patent specification (the “Specification”) describes a
`communications method and system using a plurality of cellular phones each
`having an integrated Personal Digital Assistant (PDA), Global Positioning
`System (GPS) receiver, and Advanced Communication Software (ACS) for
`the management of a plurality of people through the use of a remote server
`on a communications network. Ex. 1001, 1:33–42. The Specification
`describes rapidly establishing an ad hoc network of devices (e.g.,
`smartphones, PDAs, or personal computers) with users, such as first
`responders in an emergency situation, logging onto a network using the
`network’s name and security key (a common “password” for everyone). Id.
`at Abstract, 4:4–15. Once logged on, the user’s devices exchange each
`other’s identity, location, and status information via the remote server. Id. at
`5:13–22. “Each cellular phone/PDA/GPS user device is identified on a map
`display of the other network participant users’ phone devices by a display
`symbol that is generated on each user phone display to indicate each user’s
`own location and identity.” Id. at 7:52–56. These symbols are user-
`selectable and are positioned on a geographical map of an interactive display
`with georeferenced entities. Id. at 6:18–23, 6:59–6:66, Fig. 1. Each symbol
`
`
`1 Inter partes review was denied in IPR2018-00817 and IPR2018-00818.
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`is placed at the correct geographical location on the user display, is
`correlated with the map on the display, and is transmitted and automatically
`displayed on the other network participants’ PC and PDA devices. Id. at
`7:56–60. Network users communicate or send data to another network user
`by selecting the user’s symbol and the desired action using a software
`switch. Id. at 7:9–17.
`Figure 1 of the ’251 patent is set out below.
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`Figure 1, shown above, depicts a user’s digital device 10 (cellular
`phone/PDA/GPS) having a touch screen 16 displaying a geographical map
`16b with georeferenced entities 30, 34. Id. at 4:48–49, 6:19–23, 6:59–7:8.
`
`C. Challenged Claims
`Claims 1 and 24 are independent and are substantially similar—the
`principal difference being that claim 1 recites a computer-implemented
`method and claim 24 recites a system. Claim 1 is illustrative.
`1. A computer-implemented method
`comprising:
`[1a] with a first device, receiving a message
`from a second device, wherein the message
`relates to joining a group;
`[1b] based on receiving the message from the
`second device, participating in the group,
`wherein participating in the group includes
`sending first location information to a server
`and receiving second location information from
`the server, the first location information
`comprising a location of the first device, the
`second location information comprising a
`plurality of locations of a respective plurality of
`second devices included in the group;
`[1c] presenting, via an interactive display of the
`first device, a first interactive, georeferenced
`map and a plurality of user-selectable symbols
`corresponding to the plurality of second
`devices, wherein the symbols are positioned on
`the first georeferenced map at respective
`positions corresponding to the locations of the
`second devices, and wherein the first
`georeferenced map includes data relating
`positions on the first georeferenced map to
`spatial coordinates;
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`[1d] sending, from the first device to the server,
`a request for a second georeferenced map
`different from the first georeferenced map,
`wherein the request specifies a map location;
`[1e] receiving, from the server, the second
`georeferenced map, wherein the second
`georeferenced map includes the requested
`location and data relating positions on the
`second georeferenced map to spatial
`coordinates;
`[1f] presenting, via the interactive display of the
`first device, the second georeferenced map and
`the plurality of user-selectable symbols
`corresponding to the plurality of second
`devices, wherein the symbols are positioned on
`the second georeferenced map at respective
`positions corresponding to the locations of the
`second devices; and
`[1g] identifying user interaction with the
`interactive display selecting one or more of the
`user-selectable symbols corresponding to one
`or more of the second devices and positioned
`on the second georeferenced map and user
`interaction with the display specifying an action
`and, based thereon, using an Internet Protocol
`to send data to the one or more second devices
`via the server,
`[1h] wherein the first device does not have
`access to respective Internet Protocol addresses
`of the second devices.
`Ex. 1001, 14:59–15:35 (brackets and numbering added).
`D. Relevant References
`Petitioner relies upon the following references:
`(1) U.S. Patent No. 7,353,034 B2 issued April 1, 2008 (“Haney”) (Ex.
`1005); and
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`(2) U.S. Patent No. 6,366,782 B1, issued April 2, 2002 (“Fumarolo”)
`(Ex. 1006).
`
`E. Asserted Ground of Unpatentability
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 over the combined teachings of Haney and Fumarolo. Pet.
`5. Petitioner contends that Haney is prior art under pre-AIA 35 U.S.C.
`§102(e), because the claims of the ’251 patent are not entitled to a filing date
`earlier than April 17, 2006, the filing date of U.S. Patent No. 7,630,724 (“the
`’724 patent”). Pet. 6–11. Petitioner asserts that the ’251 patent is not
`entitled to the earlier September 21, 2004, filing date of U.S. Patent No.
`7,031,728 (“the ’728 patent”), because the ’728 patent does not comply with
`the written description requirement of 35 U.S.C. § 112. Id.
`
`II. DISCUSSION
`
`A. Level of Ordinary Skill
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
`(1966). “The importance of resolving the level of ordinary skill in the art
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner argues that a person of ordinary skill in the art in the field of
`the ’251 patent would have had either: (1) a Bachelor of Science degree in
`Electrical Engineering or an equivalent field, with three to five years of
`academic or industry experience in the wireless/mobile location industry or
`comparable industry experience; or (2) a Master of Science degree in
`Electrical Engineering or an equivalent field, with two to four years of
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`academic or industry experience in the same field. Pet. 11. Such a person of
`ordinary skill, Petitioner asserts, would have been capable of implementing
`mobile applications, including those that displayed maps. Id.
`Patent Owner does not provide any evidence or argument as to the
`level of ordinary skill in the art. See generally Prelim. Resp. 1–33.
`For purposes of this decision, and based on the record before us, we
`adopt Petitioner’s assessment of the level of ordinary skill in the art.
`
`B. Claim Construction
`For this case, claim terms in an unexpired patent are given their
`broadest reasonable construction in light of the specification of the patent.
`37 C.F.R. § 42.100(b) (2016). Consistent with that standard, we assign
`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention, in the context
`of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need
`be construed, and only to the extent necessary to resolve the controversy.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`1. Patent Owner’s Contentions
`Patent Owner contends the Petition should be denied on grounds that
`the Petition fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3);
`namely, that the Petition fails to identify for the Board how each claim term
`is to be construed. Prelim. Resp. 5–16.
`Patent Owner argues that Petitioner has taken positions on claim
`construction in district court that are inconsistent with positions taken here.
`Id. at 5–10. For example, Patent Owner argues, “Defendants, Huawei and
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`LG, who are real parties in interest to this Petition, contend in the District
`Court Litigation that numerous limitations of apparatus claims . . . are (1)
`governed by 35 U.S.C. § 112(f) and (2) indefinite,” whereas in this
`proceeding “Petitioner contends that each term (except for the georeferenced
`map term) of apparatus claims 24-35 should be given its plain and ordinary
`meaning.” Id. at 5–6.
`Patent Owner also argues “37 C.F.R. § 42.104(b)(3) . . . requires
`Petitioner to identify corresponding structure for each term that it contends
`should be governed by 35 U.S.C. 112(f)” and that “Petitioner’s real parties
`in interest have provided corresponding structure to the District Court,
`albeit, in the alternative . . . [h]owever, Petitioner did not provide such an
`identification in this proceeding.” Id. at 10.
`Patent Owner further argues that Petitioner “knowingly advanced
`conflicting positions before the District Court and in this proceeding,” and
`that such inconsistent positions violate 37 C.F.R. § 42.11 and § 11.18(b)(2),
`warranting denial of the Petition. Id. at 13–16.
`We disagree with Patent Owner. 37 C.F.R. § 42.104(b)(3) states that
`the petition must set forth “[h]ow the challenged claim is to be construed.
`Where the claim to be construed contains a means-plus-function or step-
`plus-function limitation as permitted under 35 U.S.C. 112(f), the
`construction of the claim must identify the specific portions of the
`specification that describe the structure, material, or acts corresponding to
`each claimed function.” 37 C.F.R. § 42.104(b)(3) does not state that claim
`construction proposed in this proceeding must be identical, or even similar,
`to any claim construction proposed in district court proceedings, let alone
`those constructions proposed by entities other than the Petitioner. Petitioner
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`complies with our rules by identifying claim constructions it proposes as the
`basis for requesting review of the challenged claims.
`Moreover, the standards used for claim construction and the burdens
`of proof are different in district court than they are in this proceeding, such
`that different constructions may be appropriate depending on the context. In
`district court proceedings, claims in issued patents are construed using the
`framework set forth in Phillips v. AWH Corp., which emphasizes
`considering the plain meaning of the claim terms themselves in light of the
`intrinsic record. In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1341 (Fed. Cir.
`2016) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–15 (Fed. Cir.
`2005) (en banc)). In this proceeding, the Board uses the broadest reasonable
`construction consistent with the specification. See Cuozzo Speed Tech., LLC
`v. Lee, 136 S. Ct. 2131 (2016) (affirming the use of broadest reasonable
`construction standard despite the possibility of inconsistent results in district
`court litigation).
`In addition, Fed. R. Civ. P. 8(d)(3) allows a party to take different,
`alternative, or even inconsistent positions. See Bancorp Services v. Sun Life
`Assur. Co. of Canada, 687 F.3d 1266, 1280 (Fed. Cir. 2012) (citing Fed. R.
`Civ. P. 8(d)(3), and holding the party was entitled to take inconsistent
`positions); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed.
`Cir. 2010) (claims are indefinite, and in the alternative, anticipated); Nippon
`Suisan Kaisha Ltd. v. Pronova Biopharma Norge, AS, PGR2017-0033,
`Paper 7 (Jan. 17, 2018) (instituting review of alternative positions of
`indefiniteness and anticipation/obviousness).
`For these reasons, we decline to deny the Petition for the alleged
`deficiency in compliance with 37 C.F.R § 42.104(b)(3), as requested by
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`Patent Owner.
`2. “second georeferenced map”
`Petitioner proposes that the claim term “second georeferenced map”
`“includes ‘an aerial photograph, a satellite image, [or] a moved map relative
`to a first georeferenced map.’” Pet. 13 (citing Ex. 1003 ¶¶ 17–18).
`Petitioner points out that “[t]he specification of the ’251 patent does
`not use the terms ‘second georeferenced map.’” Petitioner argues that
`during prosecution of the ’251 patent,
`in response to a Final Office Action, Patent Owner
`pointed to a single sentence from the related ’724
`patent as allegedly supporting the claimed “second
`georeferenced map” limitation: “[t]he cell phone
`device application software, however, can also
`provide the user the ability to request a specific geo-
`referenced map or chart, aerial photograph or
`satellite image from a remote image server by
`pointing at the specific location desired for the
`map.”
`Id. at 13–14 (citing Ex. 1002, 551).
`Petitioner also argues that
`in a district court case currently pending in the
`Eastern District of Texas, Patent Owner again
`provided a single sentence to explain why the
`accused products allegedly operate by “sending …
`a request for a second georeferenced map”: “[t]he
`exemplary Accused Devices
`are
`further
`programmed to permit users to request and display
`additional maps by, for example, moving the map
`screen and/or by selecting satellite image maps.”
`Id. at 14 (citing Ex. 1008, 18).
`Patent Owner argues that Petitioner has not provided any construction
`for term “second georeferenced map” in the district court litigation. Prelim.
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`Resp. 12. Patent Owner does not propose a construction for the term
`“second georeferenced map.” See Prelim. Resp. 12–13.
`Claim 1 recites “a second georeferenced map different from the first
`georeferenced map” and “wherein the second georeferenced map includes
`the requested location and data relating positions on the second
`georeferenced map to spatial coordinates.” Ex. 1001, 15:13–14, 17–19. The
`Specification also explains,
`[t]he internal CPU [of the user device] includes
`databases and software application programs that
`provide for a geographical map and georeferenced
`entities that are shown as display portion 16b that
`includes as part of the display various areas of
`interest in the particular local map section.
` Id. at 6:18–23. The Specification goes on to explain,
`[t]o use the communication system, a user starts the
`PDA/cellular phone device system by turning on the
`cell phone power and selecting the cell phone and
`network software which causes: a) the cellular
`phone to be activated (if it has not already been
`activated); b) the GPS interface receiver to be
`established; c) a map of the geographic area where
`the operator is located and operator’s own unit
`symbol to appear at the correct latitude and
`longitude on the map on the display[.]
`Id. at 8:43–51 (emphasis added). The map is able to display the location of
`the operator’s unit because, as the Specification explains,
`[t]he screen display 16b, which is a touch screen,
`provides x and y coordinates of the screen 16b to
`the CPU’s software from a map in a geographical
`database. The software has an algorithm that relates
`the x and y coordinates to latitude and longitude and
`can access a communications net participant’s
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`symbol or a fixed or movable entity’s symbol as
`being the one closest to that point.
`Id. at 7:2–8. Thus, an important aspect of the map displayed on a user’s
`device is the depiction of an accurate location of the user’s symbol on the
`map, which is determined by relating the x and y coordinates of the map to
`the latitude and longitude of the user’s geographic position, i.e., “spatial
`coordinates.”
`We note Petitioner’s argument that, during prosecution of the ’251
`patent, Patent Owner pointed to the ’724 patent as supporting the claimed
`“second georeferenced map” limitation. Pet. 13–14. Petitioner points out
`that Patent Owner relied upon the explanation in the ’724 patent that “[t]he
`cell phone device application software, however, can also provide the user
`the ability to request a specific geo-referenced map or chart, aerial
`photograph or satellite image from a remote image server by pointing at the
`specific location desired for the map.” Id. (citing Ex. 1002, 551).
`Petitioner acknowledges, however, that its evidence “is insufficient to
`determine the exact scope of the claimed ‘second georeferenced map.’” Id.
`at 14. Nonetheless, Petitioner argues, “a [person of ordinary skill in the art]
`would understand from [the] evidence that the claimed ‘second
`georeferenced map’ includes an aerial photograph, a satellite image, and a
`moved map relative to the ‘first georeferenced map.’” This language from
`the ’724 patent, however, is written in the alternative, and says that the
`applicable software provides the user with the ability to request a
`georeferenced map, or chart, aerial photograph or satellite image from a
`remote server. See Ex. 1010, 18:63–67 (emphasis added). Moreover,
`Petitioner does not explain how such a chart, aerial photograph, or satellite
`image is, or would be, “georeferenced,” and the portions of Mr. Williams’
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`declaration relied on by Petitioner do not provide an explanation either. See
`Pet. 13–15 (citing Ex. 1003 ¶¶ 17–18, 102). For example, Petitioner does
`not explain how the chart, aerial photograph, or satellite image would
`“include[] the requested location and data relating positions on the second
`georeferenced map to spatial coordinates,” or how they would “relate[] the x
`and y coordinates to latitude and longitude.”
`For these reasons, we decline to adopt Petitioner’s proposal that the
`term “second georeferenced map” includes an aerial photograph, a satellite
`image, or a moved map relative to a first georeferenced map. For purposes
`of this decision, we construe the term “second georeferenced map” to mean
`“a map, different from a first georeferenced map, which includes data
`relating positions on the map to spatial coordinates (e.g., latitude and
`longitude).”
`
`C. Priority Date
`“[T]o gain the benefit of the filing date of an earlier application under
`35 U.S.C. § 120, each application in the chain leading back to the earlier
`application must comply with the written description requirement of 35
`U.S.C. § 112.” Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378
`(Fed. Cir. 2007) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
`1571 (Fed. Cir. 1997)); see also In re Hogan, 559 F.2d 595, 609 (C.C.P.A.
`1977) (“[T]here has to be a continuous chain of copending applications each
`of which satisfies the requirements of § 112 with respect to the subject
`matter presently claimed.” (quoting In re Schneider, 481 F.2d 1350, 1356
`(CCPA 1973)) (alteration in original). Thus, if any application in the
`priority chain fails to make the requisite disclosure of subject matter, the
`later-filed application is not entitled to the benefit of the filing date of
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`applications preceding the break in the priority chain.
`
`D. Chain of Claimed Priority
`The ’251 patent claims priority through a series of applications that
`begins with U.S. Patent Application 10/711,490 (“the ’490 application”),
`which was filed on September 21, 2004, and ultimately issued as the ’728 on
`April 18, 2006 (Ex. 1007). Ex. 1001, 1:8–28. Several of these earlier-filed
`applications are continuation-in-part applications (“CIP”); CIP applications
`may add, or remove, subject matter. Petitioner provides a chart, set out
`below, identifying the related patents listed in the ’251 patent. Pet. 7.
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`Petitioner’s chart, shown above, illustrates the sequence of the related
`patents listed in the ’251 patent. Id.
`1. The Parties’ Contentions
`Petitioner contends that the ’251 patent cannot claim priority earlier
`than April 17, 2006, the filing date of the ’724 patent. Pet. 9. Petitioner
`argues that the earlier ’728 patent, which has a filing date of September 21,
`2004, does not satisfy the written description requirement of 35 U.S.C. §112.
`Id. Petitioner argues that the ’728 patent’s failure to comply with the written
`description requirement breaks the chain of priority that would allow the
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`’251 patent to benefit from the ’728 patent’s filing date, September 21, 2004.
`Id.
`
`Petitioner argues the ’251 patent’s priority chain is broken because the
`priority chain is rife with continuations-in-part,
`which both added and deleted material to what
`ultimately became the ’251 patent. . . . Patent Owner
`revised its claims multiple times during prosecution
`in order to overcome rejections from the Examiner.
`However, Patent Owner specifically pointed to
`passages from the later ’724 patent as support for its
`added claim elements. And, the passages on which
`it relied in the ’724 patent were not in the earlier
`’728 patent specification.
`
`Id. at 9–10.
`Specifically, Petitioner argues,
`Patent Owner amended the independent claims to
`include the limitation “wherein the first device does
`not have access to respective Internet Protocol
`addresses of the second devices. . . . In its remarks
`corresponding to each of these amendments, Patent
`Owner was only able to point to various portions of
`the ’724 patent (and not the ’728 patent) as allegedly
`providing support for these amendments.
`Id. at 10 (citing Ex. 1002, 437, 503).
`Petitioner also argues that the word “server” does not appear in the
`’728 patent, and that all of the claimed functionality that is attributed to the
`“server” is found for the first time in the ’724 patent. Id. at 11.
`Patent Owner argues that the “Petitioner bears the burden of proof
`when attacking a priority claim of a challenged patent in an inter partes
`review.” Prelim. Resp. 16 (citing 35 U.S.C. § 316(e); Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); Fitbit,
`Inc. v. Bodymedia, Inc., Case No. IPR2016-00707 (P.T.A.B., Sept. 8, 2016),
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`Paper 9 at 11). Patent Owner argues, “it is the Petitioner’s burden to show in
`the Petition that the claims are not entitled to the earlier priority date.
`Prelim. Resp. 16.
`Patent Owner argues that Petitioner has not considered the proper
`disclosure in its written description analysis, which should have been
`directed to the full as-filed application and original claims of U.S. Patent
`Application Number 10/711,490, instead of the ’728 patent. Id. at 17.
`Patent Owner argues, “Petitioner must demonstrate that the disclosure fails
`to reasonably convey to those skilled in the art that the inventor was in
`possession of the invention. Id. at 19 (citing In re Edwards, 568 F.2d 1349,
`1351–52 (CCPA 1978); Fitbit, Inc. v. Bodymedia, Inc., Case No. IPR2016-
`00707, Paper 9 at 11). Patent Owner argues that “[t]he disclosure of the as-
`filed U.S. Patent Application Number 10/711,490 reasonably conveys to one
`of skill in the art that the inventor was in possession of the Challenged
`Claims.” Id. at 19.
`2. Allocation of Burdens
`In AIA proceedings, the petitioner bears the ultimate burden of
`demonstrating unpatentability, commonly referred to as the “burden of
`persuasion.” Dynamic Drinkware, 800 F.3d at 1379. However, where the
`patent-at-issue claims priority through CIPs, as the ’251 patent does here,
`and the Examiner did not expressly address the priority issue during
`prosecution, a different burden, the “burden of production,” shifts to the
`patent owner once petitioner provides potentially invalidating art. Research
`Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 871 (Fed. Cir. 2010); Tech.
`Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008);
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed. Cir.
`
`18
`
`
`
`IPR2018-01081
`Patent 9,445,251 B2
`
`2008).
`Once the burden of production shifts to patent owner, patent owner
`must then show not only the existence of the earlier application, but also
`how the written description in the earlier application supports the claim in
`order to rely on that earlier filing date. Tech. Licensing Corp. 545 F.3d at
`1327. At that point, the relevant inquiry is whether the disclosure in the
`earlier application “describe[s] an invention understandable to [the] skilled
`artisan and show[s] that the inventor actually invented the invention
`claimed” in the challenged patent. Ariad Pharm., Inc. v. Eli Lilly & Co., 598
`F.3d 1336, 1351 (Fed. Cir. 2010).
`While Petitioner bears the ultimate burden of demonstrating
`unpatentability of the challenged claims, the burden of production shifts to
`Patent Owner to show that the ’251 patent is entitled to an earlier priority
`date, once Petitioner provides potentially invalidating art, here the Haney
`and Fumarolo references. See Research Corp. Techs., 627 F.3d at 871;
`Tech. Licensing Corp., 545 F.3d at 1326–27; PowerOasis, Inc., 522 F.3d at
`1305–06. Patent Owner must then show that the written description of the
`’728 patent supports the challenged claims in order to rely on its earlier
`filing date. See Tech. Licensing Corp. 545 F.3d at 1327. Moreover, in order
`to claim priority back to the filing date of the ’728 patent, Patent Owner
`must show the chain is continuous, and therefore must show also that the
`intervening applications provide written description support for the
`challenged claims. In re Schneider, 481 F.2d 1350, 1356 (CCPA 1973).
`3. Written Description Requirement
`To gain the benefit of the filing date of an earlier application under 35
`U.S.C. § 120, each application in the chain leading back to the earlier
`
`19
`
`
`
`IPR2018-01081
`Patent 9,445,251 B2
`
`application must comply with the written description requirement of 35
`U.S.C. § 112. Zenon Envtl., Inc., 506 F.3d at 1378. In order to satisfy the
`written description requirement, “the description must ‘clearly allow persons
`of ordinary skill in the art to recognize that [the inventor] invented what is
`claimed.’” Ariad Pharm., Inc., 598 F.3d at 1351 (quoting Vas-Cath Inc. v.
`Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “In other words, the
`test for sufficiency is whether the disclosure of the application relied upon
`reasonably conveys to those skilled in the art that the inventor had
`possession of the claimed subject matter as of the filing date.” Id.; see also
`Ralston Purina Co. v. Far–Mar–Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir.
`1985).
`The test for sufficiency requires “an objective inquiry into the four
`corners of the specification from the perspective of a person of ordinary skill
`in the art. Based on that inquiry, the specification must describe an
`invention understandable to that skilled artisan and show that the inventor
`actually invented the invention claimed.” Ariad Pharm., Inc. at 1351. As
`we discussed supra, the burden to demonstrate that the ’490 Application
`satisfies this test has shifted to Patent Owner.
`Petitioner contends that the ’251 patent is not entitled to rely on the
`filing date of the ’728 patent, September 21, 2004, for priority. Pet. 9.
`Instead, Petitioner argues, the priority date of the ’251 patent cannot be
`earlier than the filing date of the ’724 patent, April 17, 2006. Id.
`Petitioner argues the ’728 patent does not provide written description
`support for certain amended limitations of the ’251 patent claims, namely
`the recited “server” and “wherein the first device does not have access to
`respective Internet Protocol addresses of the second devices.” Id. at 10.
`
`20
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`
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`IPR2018-01081
`Patent 9,445,251 B2
`
`Petitioner asserts that Patent Owner “was only able to point to various
`portions of the ’724 patent (and not the ’728 patent) as allegedly providing
`support for these amendments.” Id. Petitioner also notes that the word
`“server” does not appear in the ’728 patent. Id. at 11.
`Patent Owner argues that Petitioner’s written description analysis is
`“fatally deficient” because Petitioner and its declarant, Mr. David Williams,
`only considered the issued ’728 patent and not the “full as-filed application
`and original claims of U.S. Patent Application Number 10/711,490.”
`Prelim. Resp. 17.
`The problem with Patent Owner’s argument, however, is that the
`burden of production has shifted to Patent Owner to demonstrate that the
`’251 patent is entitled to benefit from the earlier filing date of the ’728
`patent. Although Patent Owner contends that the ’490 application
`“reasonably conveys to one of skill in the art that the inventor was in
`possession of the Challenged Claims,” Patent Owner does not provide any
`analysis, and fails to cite to any evidence, demonstrating that either the ’490
`application, or the ’728 patent, provides written description support for the
`limitations “server” and “wherein the first device does not have access to
`respective Internet Protocol addresses of the second devices,” recited in the
`’251 patent claims.
`Patent Owner next argues,
`Petitioner focuses on a distraction which has no
`impact o
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