`
`
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`IPR2018-01083
`U.S. Patent No. 9,445,251
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________________________________
`
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
`
`
`
`Patent No. 9,445,251
`Issue Date: September 13, 2016
`Title: METHOD TO PROVIDE AD HOC AND PASSWORD PROTECTED
`DIGITAL AND VOICE NETWORKS
`
`
`
`_________________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2018-01083
`_________________________________________________________________________
`
`
`
`
`
`

`

`
`
`
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`IPR2018-01083
`U.S. Patent No. 9,445,251
`
`TABLE OF CONTENTS
`
`Page(s)
`
`INTRODUCTION ........................................................................................... 1
`
`THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO PROVIDE A SUFFICIENT STATEMENT OF
`HOW THE CLAIMS SHOULD BE CONSTRUED ...................................... 5
`
`
`
`I.
`
`II.
`
`A.
`
`Petitioner’s proposed construction of the “device” terms
`conflict with positions it has taken in the District Court
`Litigation and Petitioner has failed to meet its burden under 37
`C.F.R. § 42.104 ...................................................................................... 5
`
`B.
`
`Petitioner’s conflicting positions violate 37 C.F.R. § 42.11,
`§ 11.18(b)(2) ........................................................................................... 13
`
`III.
`
`PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS ADVANCED
`IN THE PETITION, AND THE PETITION SHOULD BE DENIED .........15
`
`A.
`
`Requirements for Showing Obviousness Under 35 U.S.C. § 103 ......... 15
`
`B.
`
`C.
`
`Ground 1 Is Deficient Because Fumarolo Is Directed to a
`Completely Different Technological Field and There Is No
`Motivation to Combine Fumarolo with the Secondary
`References .............................................................................................. 18
`
`Grounds 1-2 Are Deficient Because the Prior Art Does Not
`Disclose or Suggest the Claimed “First Device” and Petitioner
`Does Not Provide a Proper Motivation to Combine the
`References .............................................................................................. 25
`
`D. Grounds 1-2 Are Deficient Because the Prior Art Fails to
`Disclose or Suggest “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
`
`ii
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`

`

`
`
`E.
`
`F.
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`
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`wherein the first georeferenced map includes data relating
`positions on the first georeferenced map to spatial coordinates” .......... 27
`
`Grounds 1-2 Are Deficient Because The Prior Art Does Not
`Disclose or Suggest the Claimed “with a first device, receiving
`a message from a second device, wherein the message relates to
`joining a group” ...................................................................................... 31
`
`Grounds 1-2 Are Deficient Because Liu Is Directed to a
`Completely Different Technological Field and There Is No
`Motivation to Combine Any of the References with Liu ....................... 32
`
`IV. CONCLUSION ..............................................................................................33
`
`
`
`
`iii
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`

`

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`
`Cases
`
`
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`IPR2018-01083
`U.S. Patent No. 9,445,251
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Apple, Inc. v. Contentguard Holdings, Inc.,
`Case No. IPR2015-00355 (P.T.A.B., June 26, 2015) ......................................... 15
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 17
`
`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) (en banc) ............................................................ 12
`
`Facebook, Inc. v. Sound View Innovations, LLC,
`Case Nos. IPR2017-00998 & IPR2017-01002 (P.T.A.B., Sept. 5,
`2017) ................................................................................................................... 11
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288 (Fed. Cir. 2009) .......................................................................... 17
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 15
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 17
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 16
`
`Key Pharm. v. Hercon Labs. Corp.,
`161 F.3d 709 (Fed. Cir. 1998) ............................................................................ 14
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 15
`
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
` Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) ............................................... 16
`
`N. Telecom Ltd. v. Samsung Elecs. Co.,
`215 F.3d 1281 (Fed. Cir. 2000) .......................................................................... 14
`
`iv
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`

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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 16
`
`Sanofi-Aventis U.S. v. Immunex Corporation,
`Case No. IPR2017-01129 (P.T.A.B., Oct. 4, 2017) ........................................... 12
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 15
`
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 17
`
`Western Digital Corporation v. SPEX Technologies, Inc.,
`Case IPR2018-00084 (P.T.A.B., April 25, 2018) ............................................... 11
`
`Williamson v. Citrix,
`792 F.3d 1339 (Fed. Cir. 2015) (en banc) .......................................................... 12
`
`Yniguez v. State of Ariz.,
`939 F.2d 727 (9th Cir. 1991) .............................................................................. 14
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 15
`
`35 U.S.C. § 112 .................................................................................................passim
`
`35 U.S.C. § 314(a) ..................................................................................................... 5
`
`Other Authorities
`
`37 C.F.R. § 11.18(b)(2) ...................................................................................... 11, 13
`
`37 C.F.R. § 42.11 ............................................................................................... 11, 13
`
`37 C.F.R. § 42.104 ............................................................................................passim
`
`
`
`v
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`

`

`
`
`
`
`Exhibit No.
`
`Document
`
`LIST OF EXHIBITS
`
`Appendix 1 to P.R. 4-3 Joint Claim Construction and Pre-
`Hearing Statement filed in AGIS Software Development LLC v.
`Huawei Device USA, Inc., et al. – Parties’ Proposed
`Constructions and Supporting Evidence, filed in AGIS Software
`Development LLC v. Huawei Device USA, Inc., et al., Case No.
`2:17-cv-00513-JRG-RSP (Dkt. 149-1)
`P.R. 4-3 Joint Claim Construction and Pre-Hearing Statement,
`filed in AGIS Software Development LLC v. Huawei Device
`USA, Inc., et al., Case No. 2:17-cv-00513-JRG-RSP (Dkt. 149)
`Appendix 1 to P.R. 4-3 - Updated Joint Claim Construction and
`Prehearing Statement in AGIS Software Development LLC v.
`Huawei Device USA, Inc., et al. – Parties’ Proposed
`Constructions and Supporting Evidence filed in AGIS Software
`Development LLC v. Huawei Device USA, Inc., et al., Case No.
`2:17-cv-00513-JRG-RSP (Dkt. 162-1)
`P.R. 4-3 - Updated Joint Claim Construction and Prehearing
`Statement filed in AGIS Software Development LLC v. Huawei
`Device USA, Inc., et al., Case No. 2:17-cv-00513-JRG-RSP
`(Dkt. 162)
`Motorola Dispatch Console
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`vi
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`

`

`
`
`I.
`
`INTRODUCTION
`
`On May 15, 2018, Google LLC (“Petitioner”) submitted a petition (Paper 2,
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`“Petition” or “Pet.”) to institute inter partes review (“IPR”) of U.S. Patent No.
`
`9,445,251 (Ex. 1001, “the ’251 Patent”), challenging claims 1, 2, 4-6, 8, 10, 12, 22-
`
`24, 27, 29, 31, 32, and 35 (the “Challenged Claims”)1. The Petition identifies the
`
`real parties in interest as “Google LLC; Huawei Device USA Inc.; Huawei Device
`
`Co., Ltd.; Huawei Device (Dongguan) Co., Ltd.; Huawei Technologies USA Inc.;
`
`Huawei Technologies Co., Ltd.; and LG Electronics, Inc.” Pet. at 2. Huawei and
`
`LG are parties to district court cases captioned as AGIS Software Development
`
`LLC v. Huawei Device USA Inc., Case No. 2:17-cv-00513 (E.D. Tex. June 21,
`
`2017) (Lead Case) and AGIS Software Development LLC v. HTC Corporation,
`
`Case No. 2:17-cv-00514 (E.D. Tex. June 21, 2017) (Lead Case) (hereinafter, the
`
`“District Court Litigation”). Google and LG are represented by the same outside
`
`counsel, Arnold & Porter Kaye Scholer LLP.
`
`The Petition challenges all of the claims with only a single ground––that the
`
`Challenged Claims are obvious over four documents: U.S. Patent No. 6,366,782 to
`
`Fumarolo et al. (Exhibit 1005, “Fumarolo”) in view of U.S. Patent No. 6,204,844
`
`to Fumarolo et al. (Exhibit 1006, “Fumarolo-844”), U.S. Patent Application No.
`
`
`1 The Challenged Claims in IPR2018-01083 are the very same claims
`
`challenged in IPR2018-01081.
`
`1
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`2002/0173906 by Muramatsu (Exhibit 1007, “Muramatsu”), and U.S. Patent No.
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`2002/0027901 by Liu et al. (Exhibit 1008, “Liu”). Pet. at 5. However, the Petition
`
`fails for at least three reasons: (1) the Petition fails to properly construe the claims;
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`(2) the Petitioner fails to identify how certain elements are disclosed in the
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`references; and (3) the Petition does not demonstrate that the Challenged Claims
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`are obvious and that a person of ordinary skill in the art would have been
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`motivated to combine the references which are directed to different technological
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`fields.
`
`First, the Petition is deficient because Petitioner fails to meet its burden
`
`under 37 C.F.R. § 42.104(b)(3). Petitioner and real parties in interest Huawei and
`
`LG proffered conflicting claim constructions in the co-pending District Court
`
`Litigation, including an identification of numerous claims that they contended are
`
`governed by 35 U.S.C. § 112(f) and are indefinite. Ex. 2001 at 38–55; Ex. 2003 at
`
`31–48. However, in this Petition, Petitioner does not allege that any of the
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`Challenged Claims are governed by 35 U.S.C. § 112(f) and are indefinite.
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`Accordingly, the Petition is deficient and should be denied in its entirety.
`
`Second, the Petition fails to address how each element of each claim is
`
`found in the prior art. Petitioner’s sole ground is based on a hindsight-based
`
`combination of Fumarolo with three secondary references lacking any motivation
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`to combine or expectation of success with respect to Muramatsu and Liu. For
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`2
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`example, the Petition fails to show how a person of ordinary skill in the art would
`
`have been motivated to combine the features of Fumarolo’s resource-abundant
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`“fixed computer-aided dispatch (CAD) terminal (101)” with Muramatsu’s “cellular
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`phone 1.” As described in further detail below, Fumarolo’s fixed dispatch terminal
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`comprises 1) a communication interface to a wired broadband-leased telephone
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`(with significantly more bandwidth than a cellular network), 2) a microprocessor
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`and a digital signal processor; 3) a foot switch, a panel microphone, a push-to-talk
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`(PTT) activator, a computer mouse, a keyboard; and 4) a combination of random
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`access memory (RAM), read-only memory (ROM), programmable read-only
`
`memory (PROM), and a floppy disk to store software algorithms and data. This
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`stark difference between Fumarolo, the secondary references, and the ’251 Patent
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`carries over to Petitioner’s improper mapping of the prior art to the claim elements.
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`Specifically, Petitioner maps the claimed “first device” to Fumarolo’s “display-
`
`based terminal 101.” Pet. at 23. In subsequent limitations, Petitioner
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`inconsistently maps Muramatsu’s cell phone 1 to the claimed “first device,”
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`without providing a sufficient obviousness analysis, and without any motivation to
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`combine (or substitute) Muramatsu’s “cell phone 1” (Pet. at 28) with Fumarolo’s
`
`display-based terminal 101. In one example, Petitioner fails to describe how
`
`Fumarolo discloses “presenting, via the interactive display of the first device, a
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`second georeferenced map,” instead relying solely on Muramatsu’s “cellular phone
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`3
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`1” to disclose the limitation, without providing any obviousness argument or
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`motivation to combine the references. Pet. at 41-42. Petitioner’s inconsistent
`
`mappings, and failures to specify where certain elements are described in the
`
`references, are fatal to the Petition.
`
`Similarly, Petitioner has not identified any motivation to combine Liu with
`
`any of the references, including Fumarolo. Petitioner’s obviousness analysis is not
`
`based on the teachings of the prior art reference. Instead, Petitioner merely
`
`proposes an incorporation of Liu’s alleged anonymous communication into the
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`hypothetical result of the Fumarolo-based combinations. In other words, Petitioner
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`does not propose modifying any particular element taught in Fumarolo or any other
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`piece of prior art. Petitioner takes the proposed result of the combined references
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`and injects the alleged anonymous feature as an additional layer of obviousness.
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`This approach is improper because it skirts the requirement that each and every
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`element be disclosed in the teachings of the prior art. For example, Petitioner’s
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`basis for alleging that a person of ordinary skill in the art would reach Liu is that
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`Fumarolo “discloses that the goal of its system is to ‘communicate directly with
`
`communication units from a single map environment,’” Pet. 20 (citing Fumarolo at
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`2:52-56), but fails to explain how Liu’s alleged anonymous communication
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`“facilitates this single map environment.” Moreover, Petitioner alleges neither that
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`any first device can communicate as claimed with a second device where the “first
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`4
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`device does not have access to respective Internet Protocol addresses of the second
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`devices,” nor that Liu’s stations correspond to the claimed first device and second
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`device or Fumarolo’s display-based terminal 101 or Muramatsu’s cellular phone 1.
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`Indeed, Petitioner alleges only that Liu does not know a “reference code” and does
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`not explain how a “reference code” is an IP address as required by the claims.
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`Moreover, Petitioner does not allege any motivation or reason to combine Liu and
`
`Muramatsu. Accordingly, nothing in Liu addresses the deficiencies of the alleged
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`combination of Fumarolo-based combinations.
`
`Due to at least these deficiencies, the Petition does not establish “a
`
`reasonable likelihood that the Petitioner would prevail with respect to at least one
`
`of the claims challenged in the Petition.” 35 U.S.C. § 314(a). While Patent Owner
`
`explicitly reserves the right to present additional arguments, the deficiencies of the
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`Petition noted herein are sufficient for the Board to find that Petitioner has not met
`
`its burden to demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the Challenged Claims.
`
`II. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO PROVIDE A SUFFICIENT STATEMENT OF
`HOW THE CLAIMS SHOULD BE CONSTRUED
`
`A.
`
`Petitioner’s proposed construction of the “device” terms conflict
`with positions it has taken in the District Court Litigation and
`Petitioner has failed to meet its burden under 37 C.F.R. § 42.104
`
`5
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`Petitioner has failed to meet its burden under 37 C.F.R. § 42.104(b)(3) to
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`identify for the Board how each claim term is to be construed. The regulations
`
`provide that a petition for inter partes review must identify:
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`[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;
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`37 C.F.R. § 42.104(b)(3).
`
`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. Meanwhile, in the co-pending District Court Litigation,
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`Defendants2 repeatedly maintained contradictory positions (Ex. 2001-2004) which,
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`if the Board’s findings are consistent with previous cases, should prove fatal to the
`
`petition. Defendants Huawei and LG, who are real parties in interest to this
`
`
`2 As noted above, Petitioner has identified Huawei and LG as real parties in
`
`interest to this proceeding. Huawei and LG are Defendants in the consolidated
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`District Court Litigation.
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`6
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`Petition, contend in the District Court Litigation that numerous limitations of
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`apparatus claims 24-35 are (1) governed by 35 U.S.C. § 112(f) and (2) indefinite.
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`For example, Petitioner contends that the “device” limitations must be governed by
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`35 U.S.C. § 112(f), and that the alleged functions are indefinite under §112(b) for
`
`failure to disclose sufficient corresponding structure. Ex. 2001 at 38–55; Ex. 2003
`
`at 31–48. The table below summarizes Petitioner’s positions in the District Court
`
`Litigation:
`
`Claim Term
` “a first device programmed to
`perform operations comprising:
`
`[a] receiving a message from a
`second device, wherein the
`message relates to joining a
`group;
`
`[b] 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;
`
`
`Defendants’ Proposed Construction
`Governed by 35 U.S.C. § 112(f);
`functions underlined in claim language
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`
`
`
`
`
`
`
`
`
`
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`7
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`Claim Term
`[c] 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;
`
`[d] 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;
`
`[e] 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;
`
`[f] presenting, via the interactive
`display of the first device, the
`second georeferenced map and
`the plurality of user-selectable
`symbols corresponding to the
`
`Defendants’ Proposed Construction
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`
`
`
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: none disclosed
`
`
`
`
`8
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`Claim Term
`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
`
`[g] 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.”
`
`(’251 Claim 24)
`
`
`Defendants’ Proposed Construction
`
`
`
`
`
`
`
`
`Indefinite under 35 U.S.C. § 112(b)
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general
`purpose PDA or cell phone for
`implementing an undisclosed algorithm
`to perform the functionality described
`at 8:64-9:26
`
`
`
`
`
`
`Intrinsic Support
`
`See, e.g., ’251 Patent at 1:37-46, 2:52-
`56, 5:7-12, 5:39-41, 5:48-55, 5:58-64,
`6:14-15, 7:2-8, 7:52-58;
`
`’728 Patent at 8:45–50, 7:31–37,
`10:40–46, claims 3, 10;
`
`’681 Patent at 4:63–64, 6:24–31, 7:14–
`19, claims 5, 9.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain
`
`9
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`Claim Term
`
`
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`Defendants’ Proposed Construction
`the technology, state of the art at the
`time of the invention, the level of
`ordinary skill in the relevant art, and
`the meaning of this claim element to a
`person of ordinary skill in the art at the
`time of the alleged invention, including
`(1) whether a person of ordinary skill
`in the art would understand the claim
`term to have a sufficiently definite
`meaning as the name for structure and
`(2) whether a person of ordinary skill
`in the art would understand the
`specification to disclose sufficient
`structure corresponding to the claimed
`function.
`
`Defendants may also rely on
`Dr. Bartone to respond to Plaintiff’s
`claim construction positions and any
`testimony of Plaintiff’s expert and
`witnesses.
`
`Defendants also reserve the right to
`rely on positions and evidence relied
`upon by Plaintiff and its experts in the
`related IPR proceedings.
`
`
`Petitioner’s inconsistent positions are particularly egregious given the
`
`specific means-plus-function identifications required by 37 C.F.R. § 42.104(b)(3).
`
`This rule requires Petitioner to identify corresponding structure for each term that
`
`it contends should be governed by 35 U.S.C. § 112(f). Moreover, Petitioner’s real
`
`parties in interest have provided corresponding structure to the District Court,
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`10
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`IPR2018-01083
`U.S. Patent No. 9,445,251
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`albeit, in the alternative: “Intrinsic Support See, e.g., ’251 Patent at 1:37-46,
`
`2:52-56, 5:7-12, 5:39-41, 5:48-55, 5:58-64, 6:14-15, 7:2-8, 7:52-58”. Ex. 2001 at
`
`54; Exhibit 2003 at 47. However, Petitioner did not provide such an identification
`
`in this proceeding and Petitioner does not map any corresponding structure to the
`
`prior art. Petitioner and the real parties in interest, as a result of the District Court
`
`Litigation, have undoubtedly spent enough time analyzing the most advantageous
`
`constructions favoring their interests, and have made the strategic decision to
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`withhold their indefinite positions from this Board. The Petition should be denied.
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`The Board has denied institution for “failure to inform [the Board] of
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`[Petitioner’s] seemingly inconsistent claim construction positions or to provide [the
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`Board] with means-plus-function constructions as required by our rules,” while
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`stating that the failure “raises the specter of lack of candor.” Facebook, Inc. v.
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`Sound View Innovations, LLC, Case Nos. IPR2017-00998 & IPR2017-01002,
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`Paper 13 at *18, 17 (P.T.A.B., Sept. 5, 2017).3 Similarly, in following Federal
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`3 Petitioner has previously identified Western Digital Corporation v. SPEX
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`Technologies, Inc., Case IPR2018-00084 (P.T.A.B., April 25, 2018), Paper 14.
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`However, this case has no bearing on these issues. In Western Digital, the Board
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`did not address whether a petitioner’s certified statements regarding inconsistent
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`positions constituted a violation of 37 C.F.R. § 42.11, § 11.18(b)(2) which is the
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`Circuit precedent, the Board has found “[t]hat the broadest reasonable
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`interpretation applies to construing claims in inter partes review proceedings does
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`not justify taking a different position with respect to § 112 ¶ 6 before the district
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`court.” Sanofi-Aventis U.S. v. Immunex Corporation, Case No. IPR2017-01129,
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`Paper 19 at *12 (P.T.A.B., Oct. 4, 2017) (citing In re Donaldson Co., 16 F.3d
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`1189, 1193 (Fed. Cir. 1994) (en banc) (holding “no distinction is made in [§ 112]
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`paragraph six between prosecution in the PTO and enforcement in the courts . . . .
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`[P]aragraph six applies . . . whether as part of a patentability determination in the
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`PTO or as part of a validity or infringement determination in a court.”). Patent
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`Owner respectfully submits that this issue raised in this section concerns the scope
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`of the claim limitations as examined under Williamson v. Citrix, 792 F.3d 1339
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`(Fed. Cir. 2015) (en banc), rather than Phillips.
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`Accordingly, the Petition is deficient with respect to Challenged Claims 24-
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`35 for failure to disclose how the claims should be construed, for failure to identify
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`the specific portions of the specification that describe the structure, material, or
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`acts corresponding to each claimed function, and for failure to take ownership of
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`its constructions in the District Court Litigation. Due to at least these deficiencies,
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`issue raised by Patent Owner in this proceeding (and the related Google v. AGIS
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`proceedings).
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`the Petition should be denied in its entirety in order to preserve the valuable
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`resources of the Board.
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`B.
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`Petitioner’s conflicting positions violate 37 C.F.R. § 42.11,
`§ 11.18(b)(2)
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`In filing its Petition, Petitioner certified that the Petition’s “legal contentions
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`[in the Petition] are warranted by existing law” and that its “factual contentions
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`have evidentiary support.” See, 37 C.F.R. § 42.11, § 11.18(b)(2). However,
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`Petitioner and its real parties in interest have knowingly advanced conflicting
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`positions before the District Court and in this proceeding. Petitioner provides the
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`following footnote where it acknowledges that it intends to apply conflicting
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`positions:
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`Although this petition offers a construction for one particular term,
`Google does not concede that a construction is necessary under the
`district court’s claim construction standard or that the specification of
`the ’251 patent discloses adequate structure for any term that may be
`interpreted as a means-plus-function term to satisfy the indefiniteness
`standard that applies in the district court. Instead, Google merely
`asserts that the prior art teaches or suggests at least as much structure
`for any such means-plus-function term as disclosed in the
`specification of the ’251 patent. The prior art, therefore, renders the
`challenged claims of the ’251 patent obvious, as explained herein.
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`Pet. at 10. Meanwhile, in the District Court Litigation, Petitioner and its real
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`parties in interest have taken the conflicting positions that the “first device”
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`limitations of claim 24 (and claims 25–35 by dependency) must be governed by 35
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`U.S.C. § 112(f) and are indefinite under § 112(b) for failure to disclose sufficient
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`corresponding structure. Ex. 2001 at 38–55.
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`The Federal Circuit has expressed the view that contradictory constructions
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`from the same party, as advanced here, are “highly questionable” and viewed
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`“with extreme disfavor.” See, e.g., Key Pharm. v. Hercon Labs. Corp., 161 F.3d
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`709, 714 (Fed. Cir. 1998); see also, N. Telecom Ltd. v. Samsung Elecs. Co., 215
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`F.3d 1281, 1290 (Fed. Cir. 2000). The Board should bar petitioners from taking
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`inconsistent positions on the very patent claims it advocates are indefinite in
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`district court so as to preserve the integrity of the Office and its valuable resources.
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`See, e.g., Yniguez v. State of Ariz., 939 F.2d 727, 738-39 (9th Cir. 1991) (applying
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`the doctrine of judicial estoppel to prevent a party from changing its position over
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`the course of judicial proceedings) (citations omitted).
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`Petitioner’s lack of candor in identifying the proper constructions for the
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`Board and withholding seemingly inconsistent claim constructions from the record,
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`in direct contravention of the rules requiring those disclosures in the content of the
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`petition, warrants denial of the Petition. If Petitioner and its real parties in interest
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`contend that the claims should be governed by § 112(f) in the District Court
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`Litigation, they cannot reasonably contend that existing law warrants that these
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`claims should not be governed by § 112(f) in this proceeding, nor could they
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`reasonably contend that such a position has evidentiary support because these
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`positions are diametrically opposed. If Petitioner and its real parties in interest
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`believe that the claims are governed by § 112(f) and indefinite according to
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`existing law (which it must in order to advance those positions in the District Court
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`Litigation), they should not have pursued inter partes review because the Board
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`cannot find a reasonable likelihood of success where claims are indefinite.
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`Petitioner’s submission of conflicting positions in contravention of the rules
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`necessitates a denial of the Petition in its entirety.
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`III. PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS ADVANCED IN
`THE PETITION, AND THE PETITION SHOULD BE DENIED
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`A. Requirements for Showing Obviousness Under 35 U.S.C. § 103
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`The question of obviousness is resolved on the basis of underlying factual
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`determinations, including: (1) the scope and content of the prior art, (2) any
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`differences between the claimed subject matter and the prior art, (3) the level of
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`skill in the art, and (4) where in evidence, so-called secondary considerations.
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`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 406 (2007). The question is not whether the differences
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`themselves would have been obvious, but whether the claimed invention as a
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`whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
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`1530, 1537 (Fed. Cir. 1983).
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`The Board has held that a failure to identify the differences between the
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`claimed subject matter and the prior art is fatal to an obviousness challenge. See,
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`Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-00355, Decision Denying
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`Institution of Inter Partes Review, Paper 9 at 9-10 (P.T.A.B., June 26, 2015)
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`(denying institution for failure to identify the differences between the claimed
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`subject matter and the prior art).
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`In arriving at an obviousness determination, the Board must sufficiently
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`explain and support the conclusions that the prior-art referen