`Patent No. 5,699,275
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________
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`SAMSUNG TECHNOLOGIES, LTD.,
`Petitioner,
`
`v.
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`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`
`___________________________
`
`IPR2018-01553
`U.S. Patent No. 5,699,275
`
`___________________________
`
`PATENT OWNER RESPONSE
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`
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`Case IPR2018-01552
`Patent No. 5,699,275
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION........................................................................................1
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`THE PETITION DOES NOT DEMONSTRATE INVALIDITY
`OF CLAIM 1 BY A PREPONDERANCE OF THE EVIDENCE ..............1
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`A.
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`Petitioner Has Not Shown That A Hapka-Parrillo
`Combination Rendered Obvious Claim 1 .........................................3
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`1.
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`Petitioner Failed to Prove That Hapka Discloses
`Selective Updating of First and Second Mobile
`Units When Both are Capable of Being Updated
`By The Same Patch...................................................................6
`
`B.
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`Petitioner Has Not Shown That Wortham Combined With Hapka-
`Parillo Rendered Claim 1 Obvious ....................................................9
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`III. CONCLUSION............................................................................................9
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`I.
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`INTRODUCTION
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`The Board instituted review of claim 1 of U.S. Patent No. 5,699,275 (“the
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`’275 patent”) based on the proposed combination of Hapka (Ex. 1008) and Parillo
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`(Ex. 1009), hereafter the “Hapka-Parillo” combination.
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`Patent Owner presents herein only those arguments necessary to demonstrate
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`that Petitioner did not carry its burden of showing unpatentability of claim 1. Patent
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`Owner does not accede to those arguments and evidence set forth in the petition, or
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`to those conclusions drawn by the Board in the Institution Decision, that are not
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`directly addressed herein. Patent Owner incorporates herein for all purposes those
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`arguments presented in its Preliminary Response.
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`II.
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`THE PETITION DOES NOT DEMONSTRATE INVALIDITY OF
`CLAIM 1 BY A PREPONDERANCE OF THE EVIDENCE
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`After institution, Petitioner has the burden of persuasion to establish by a
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`preponderance of the evidence that claim 1 is invalid as alleged in the petition. 35
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`U.S.C. § 316(e); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016)
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`(“[T]he burden of proof is on the petitioner to prove unpatentable those issued claims
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`that were actually challenged in the petition for review and for which the Board
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`instituted review."). The burden of persuasion burden never shifts to the Patent
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`Owner. Dynamic Drinkware LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
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`(Fed. Cir. 2015) ("In an inter partes review, the burden of persuasion is on the
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`petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C.
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`§ 316(e), and that burden never shifts to the patentee." ).
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`Perhaps more importantly, the burden of production never shifts to the Patent
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`Owner. In re Magnum Oil Tools International, Ltd., 829 F.3d 1364 (Fed. Cir. 2016)
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`(“We thus disagree with the PTO's position that the burden of production shifts to
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`the patentee upon the Board's conclusion in an institution decision that "there is a
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`reasonable likelihood that the petitioner would prevail.").
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`In other words, to prevail on its allegation that claim 1 is rendered obvious by
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`the proposed Hapka-Parillo combination,
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`the petition must demonstrate by a
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`preponderance of the evidence that the differences between the subject matter of
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`claim 1 and the properly characterized prior art are such that the claimed subject
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`matter, as a whole, would have been obvious at the time the invention was made to
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`a person having ordinary skill in the art to which said subject matter pertains. KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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`The determination of obviousness involves multiple fact questions, for which
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`Petitioner bears the un-shifting burdens of production and persuasion. See Graham
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`v. John Deere Co., 383 U.S. 1, 17 (1966). A fundamental factual inquiry in the
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`obvious analysis is the “content” of the prior art. Id.
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`In other words, Petitioner has
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`the burden to prove what a person of skill in the art would have understood what
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`each prior art reference disclosed at the time the ’275 patent application was filed.
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`To establish obviousness of claim 1, the petition must demonstrate that all of
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`the claim elements are disclosed or suggested by the properly combined prior art.
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`See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re
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`Royka, 490 F.2d 981, 985 (CCPA 1974). Thus, the petition “must specify where
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`each element of the claim is found in the prior art patents or printed publications
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`relied upon.” 37 C.F.R. § 42.104(b)(4); see also Arendi S.A.R.L. v. Apple, Inc., 832
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`F.3d 1355 (Fed. Cir. 2016) (reversing Board obviousness determination based on
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`“common sense” that was conclusory and unsupported by substantial evidence).
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`Conclusory statements, whether by attorney or expert, cannot satisfy the
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`burden of demonstrating obviousness. In re Magnum Oil Tools, 829 F.3d at 1380.
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`A.
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`Petitioner Has Not Shown That The Proposed Hapka-Parrillo
`Combination Rendered Obvious Claim 1
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`Among many other things, claim 1 requires that “the manager host is further
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`operable to address the at least one discrete patch message such that the at least one
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`discrete patch message is transmitted to the first mobile unit but not the second
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`mobile unit.” Ex. 1001 at claim 1 (emphasis added).
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`In the Institution Decision, the Board concluded that this claim phrase needed
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`further construction and rewrote the claim phrase to require that
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`the manager host is further operable to decide which specific mobile
`unit to send address the at least one discrete patch message to before
`beginning transmission such that the at
`least one discrete patch
`message is transmitted to the first mobile unit but not the second mobile
`unit.
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`Decision at 6. Notably,
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`the Decision did not conclude whether Petitioners’
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`arguments and evidence about the Hapka-Parrillo combination disclosed this claim
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`element, and merely recounted Petitioner’s contentions. See Decision at 16-18. As
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`shown below, Petitioner has failed to carry its burden at least for this claim element.
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`As a first threshold issue, a correct characterization or understanding of the
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`“content” of the prior art is fundamental to a proper validity analysis. As the
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`Supreme Court established in Graham v. John Deere Co., 383 U.S. 1 (1966), “the
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`scope and content of the prior art are to be determined; differences between the prior
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`art and the claims at issue are to be ascertained; and the level of ordinary skill in the
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`pertinent art resolved. Against this background, the obviousness or nonobviousness
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`of the subject matter is determined.” Id. at 17. Not surprisingly, Board decisions
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`are reversed when the “content” of the prior art is not correctly determined. See,
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`e.g., In Re McNeil-PPC, Inc., 574 F.3d 1393, 1401 (Fed. Cir. 2008) (reversing
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`Board’s determination of obviousness because of error in understanding prior art);
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`In Re Chapman, 595 F.3d 1330, 1339-40 (Fed. Cir. 2010) (vacating obviousness
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`determination by Board so that it can “revisit its conclusion of obviousness in light
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`of a correct understanding of Gonzalez.”). A correct understanding of the content
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`of a reference cannot be obtained by cherry-picking some prior art statements and
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`ignoring others. The reference as a whole must be considered and properly
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`understood.
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`As a second threshold issue, it must be appreciated that the universe of first
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`and second mobile units described by claim 1 are only those mobile units that: 1)
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`are “operable to receive the at least one discrete patch message;” 2) that are
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`“operable to create patched operating code” by merging the patch with current
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`operating code; and 3) that are operable to switch execution to the patched operating
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`code. Thus, the second mobile unit of claim 1 must be in a condition that its current
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`operating code could be updated by the patch message sent to the first mobile unit.
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`A mobile unit whose current operating code cannot be updated with the patch
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`message cannot be the “second mobile unit” required by claim 1. For example, a
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`mobile unit whose operating code has been updated by the patch message cannot be
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`a “second mobile unit” because that unit no longer is “operable to create patched
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`operating code by merging the at least one patch with current operating code.” See
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`Ex. 1001 at claim 1.
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`Neither the Board’s Decision nor the petition expressly addresses these
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`requirements of claim 1 that at the time of transmission of the patch message by the
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`manager host both mobile units must be operable to create patched operating code
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`from current operating code, and that the manager host transmit the patch to one
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`mobile unit and not the other even though both units are capable of updating current
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`operating code.1 As shown below, this is one element of claim 1 that the Petition
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`failed to even address.
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`1.
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`Petitioner Failed to Prove That Hapka Discloses Selective
`Updating of First and Second Mobile Units When Both are
`Capable of Being Updated By The Same Patch
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`Petitioner argues that because Hapka discloses a fleet of vehicles with each
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`having a “mobile unit,” Hapka necessarily discloses a first “mobile unit” and a
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`second “mobile unit.” Pet. at 54. Neither Petitioner nor its expert separately argues
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`how or where Hapka discloses that the alleged “second” mobile unit could be
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`updated by the same patch (i.e., “the at least one discrete patch message”) that
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`1 Patent Owner sometimes refers to this claim requirement with shorthand “selective
`updating.” The Patent Office recognized the patentability of claim 1 by specifically
`noting the “selective updating” requirement of claim 1. See Ex. 1004 at 110.
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`updated the first mobile unit, as required by claim 1. See Pet. at 53-55; Ex. 1002 at
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`¶¶ 244-245.
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`Petitioner further argues that because Hapka discloses a fleet of vehicles, that
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`sending a communication to one vehicle to modify its engine algorithm necessarily
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`means that a second vehicle was not sent the communication. Pet. at 55-56. As
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`pointed out above, it is irrelevant for claim 1 whether Hapka discloses not sending a
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`communication to a second terminal. See Ex. 1001 at claim 1.
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`What is relevant, and what neither Petitioner nor its expert addressed is
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`whether Hapka disclosed that the alleged “second mobile unit” is operable to receive
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`the same communication (algorithm modification) as the first mobile unit, and
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`whether the alleged “second mobile unit” is operable to create patched operating
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`code using the same communication (algorithm modification) as used by the first
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`mobile unit. As explained in In re Magnum Oil Tools, it is not Patent Owner’s
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`burden to prove why Hapka fails to disclose the claim limitation—it was and remains
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`at all times Petitioners burden to show how and where Hapka discloses this claim
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`requirement. In re Magnum Oil Tools, 829 F.3d at 1376-77 (“[I]it is inappropriate
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`to shift the burden to the patentee after institution to prove that the patent is
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`patentable.
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`Instead,
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`the petitioner continues to bear the burden of proving
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`unpatentability after institution, and must do so by a preponderance of the evidence
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`at trial.”). That, Petitioner did not do.
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`Petitioner does not argue that Parillo (Ex. 1009) discloses the “selective
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`updating” aspect of claim 1.
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`Instead, Petitioner focusses on Parillo as allegedly
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`disclosing the “operable to address” (or “decide which specific mobile unit to send,”
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`as construed by the Board) aspect of claim 1. See Pet. at 56-60. Nowhere does
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`Petitioner address how or where Hapka or Parillo discloses a manager host that is
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`operable to send an update communication to a first mobile unit, but not to a second
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`mobile unit that is operable to create patched operating code using that very same
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`communication update. Indeed, Petitioner tacitly admits there is no such disclosure
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`in Hapka or Parillo by arguing instead that the Hapka-Parillo combination “target[s]
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`individual vehicles … that required a particular software modification, while not
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`affecting the operating code of vehicles not requiring a modification.” As
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`established above, a vehicle that does not require the modification (i.e., not operable
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`to created patched operating code) cannot be the “second mobile unit” required by
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`claim 1.
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`Thus, there is no plausible basis given in the petition for the Board to conclude
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`that Petitioners have carried their burden to demonstrate by a preponderance of the
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`evidence that a Hapka-Parillo combination would be operable to transmit update
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`information to one mobile terminal but not to a second mobile terminal when both
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`terminals were “operable to create patched operating code by merging the at least
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`one patch with current operating code located in the [] mobile unit.”
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`B.
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`Petitioner Has Not Shown That Wortham Combined With The
`Hapka -Parillo Combination Rendered Obvious Claim 1.
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`To the extent the “mobile unit” claim element is not disclosed by the Hapka-
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`Parillo, Petitioner relies on Wortham (Ex. 1014) to conclude that “this limitation
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`would have been obvious to a POSITA in view of Wortham.” Pet. at 61; Ex. 1002
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`at ¶¶ 45-58, 62-63, 257-264. Because the mobile units of claim 1 are not limited to
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`battery-powered-devices, Petitioner’s reliance on Wortham is irrelevant.
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`Moreover, Petitioner failed to show that Wortham disclosed the claim element
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`missing from the Hapka-Parillo combination; that is, selective updating.
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`In other
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`words, Petitioner provided no evidence or argument
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`that Wortham disclosed
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`transmitting update information to one mobile terminal but not to a second mobile
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`terminal when both terminals were operable to update current operating software
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`with the update information. See Pet. at 61-64; Ex. 1002 (Bederson) at ¶¶ 257-263.
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`For at least this reason, Petitioner Samsung’s proposed combination of Hapka-
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`Parillo-Wortham fails to disclose or adequately suggest the combination of all
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`elements in claim 1.
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`III. CONCLUSION
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`Petitioner had the burden to demonstrate in its petition that each element of
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`claim 1 of the ’275 patent was disclosed in a legitimate combination of prior art
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`references. Among other failures, Petitioner did not demonstrated in its petition that
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`the prior art disclosed a manager host that “decides” not to send an operating code
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`patch to a second mobile unit that is both operable to receive the patch and operable
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`to create patched operating code from the patch that was sent to a first mobile unit,
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`as required by claim 1. For at least this reason, the patentability of claim 1 should
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`be confirmed.
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`Date: May 20, 2019
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`Respectfully submitted,
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`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), I certify that this Response to Petition
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`complies with the type-volume limitation of 37 C.F.R. § 42.21(b)(1) because it
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`contains fewer than the limit of 14,000 words, as determined by the word processing
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`program used to prepare the document, excluding the parts of the document
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`exempted by 37 C.F.R. § 42.24(a)(1).
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`Date: May 20, 2019
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`Respectfully submitted,
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`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
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`Case IPR2018-01552
`Patent No. 5,699,275
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §42.6(e), I certify that an electronic copy of the foregoing
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`PATENT OWNER’S RESPONSE was served along with any accompanying
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`exhibits via the Patent Review Processing System and via email to Petitioner’s
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`counsel:
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`Joseph Palys, Philip Citroën, Naveen Modi, and Howard Herr all at PH-Samsung-
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`IronOak-IPR@paulhastings.com
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`Date: May 20, 2019
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`Respectfully submitted,
`
`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
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