`Patent No. 5,699,275
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________
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`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner,
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`v.
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`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`
`___________________________
`
`IPR2018-01553
`U.S. Patent No. 5,699,275
`___________________________
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`PATENT OWNER PRELIMINARY RESPONSE
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`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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`RELATED INTER PARTES REVIEW CASES ........................................... 2
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`A.
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`B.
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`Petitions Based Primarily on Sugita and Ballard ............................... 2
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`Petitions Based Primarily on Hapka .................................................. 3
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`III. PATENT OWNER’S RESERVATION OF RIGHTS ................................. 3
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`IV. LISTING OF FACTS ................................................................................... 4
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`V.
`
`THE PETITION DOES NOT SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS ON ANY GROUND ................................... 5
`
`A.
`
`B.
`
`The Petition Does Not Show that Hapka
`Discloses “Patching” “Operating Code” ............................................ 6
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`The Petition Does Not Show That Either Hapka
`Or Parillo Discloses “Merging” a “Patch” with
`“Operating Code” ............................................................................... 8
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`VI. CONCLUSION ........................................................................................... 11
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`CERTIFICATE OF COMPLIANCE .................................................................... 13
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`CERTIFICATE OF SERVICE ............................................................................. 14
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`I.
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`INTRODUCTION
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`For the reasons presented below, Iron Oak Technologies, LLC (Patent Owner)
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`respectfully requests that the Board exercise its discretion to deny the Petition for
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`Inter Partes Review filed by Samsung Electronics, Co., (Petitioner) concerning U.S.
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`Patent No. 5,699,275 (’275 patent).
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`35 U.S.C. § 314(a) sets forth the standard by which an IPR may be instituted:
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`The Director may not authorize an inter partes review to be instituted
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`unless the Director determines that the information presented in the
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`petition filed under section 311 and any response filed under section
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`313 shows that there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.
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`Thus, it is not the Board’s burden or duty to shift through the art relied upon by
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`Petitioner to see if a reasonable likelihood of unpatentability could have been shown
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`for Claim 1. Rather, it is the Board’s duty to determine whether the arguments and
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`evidence actually presented in the Petition demonstrate such likelihood in the first
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`instance. The Petition fails to meet this standard.
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`Each ground advanced in the Petition fails because the Petition does not
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`establish the content of each reference as would have been understood by a person
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`of ordinary skill in the art (hereafter, POSITA). Graham v. John Deere Co., 383
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`U.S. 1, 17 (1966) (“Under §103, the scope and content of the prior art are to be
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`determined; …”). The properly understood content of the cited art demonstrates that
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`they do not render obvious the subject matter of Claim 1 of the ’275 Patent.
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`For at least these reasons, the Petition should be denied in its entirety.
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`II. RELATED INTER PARTES REVIEW CASES
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`The subject Petition was filed by Petitioner Samsung on August 16, 2018,
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`along with a second Petition against the ’275 Patent. Since those filings by Petitioner
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`Samsung, three other petitions for inter partes review have been filed against the
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`’275 Patent by defendants in the underlying litigations. These additional petitions
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`are not unique, and are substantially, if not completely redundant of this Petition.
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`The currently pending Petitions are listed below.
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`A.
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`Petitions Based Primarily on Sugita and Ballard
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`A petition for inter partes review has been filed by Petitioner (i.e., Samsung
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`Electronics Co., Ltd.) (IPR2018-01552) contending that claim 1 of the ’275 patent
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`is anticipated by Sugita; or rendered obvious over Sugita and Wortham; or rendered
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`obvious over Ballarad and Shimizu.
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`A petition for inter partes review has been filed by Google LLC (IPR2019-
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`0110) contending that claim 1 of the ’275 patent is anticipated by Sugita; or rendred
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`obvious over Sugita and Wortham; or rendered obvious over Ballard and Shimizu.
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`It should be noted that this Google petition is substantially identical, if not absolutely
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`identical, to IPR2018-01552 filed by Samsung.
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`A petition for inter partes review has been filed by Microsoft Corporation
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`(IPR2019-0106) contending that claim 1 of the ’275 patent is anticipated by Sugita;
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`or obvious over Sugita; or obvious over Sugita and Burson; or obvious over Sugita
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`and Kirouac (with or without Burson); or obvious over Sugita and Ballard (with or
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`without Burson or Kirouac). It should be noted that at least the first two grounds of
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`this Microsoft petition are substantially identical, if not absolutely identical, to
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`IPR2018-01552 filed by Samsung, and IPR2019-0110 filed by Google.
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`B.
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`Petitions Based Primarily on Hapka
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`A petition for inter partes review has been filed by Google LLC (IPR2019-
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`0111) contending that claim 1 of the ’275 patent is obvious over Hapka and Parillo;
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`or obvious over Hapka, Parillo and Wortham. It should be noted that this petition is
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`substantially identical, if not absolutely identical, to the subject Petition.
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`This Preliminary Response addresses only the subject Petition. The
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`redundancy of the other related Petitions will be addressed in those IPRs.
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`III. PATENT OWNER’S RESERVATION OF RIGHTS
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`In this Preliminary Response, Patent Owner has chosen to point out only
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`certain errors in the Petition, and to present only certain arguments why trial should
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`not be instituted on any of the grounds presented in the Petition. This Preliminary
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`Response is made without prejudice to or waiver of Patent Owner’s rights to present
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`to the Board at a later date the other errors in the Petition and the grounds relied
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`upon, and to present further and different arguments and evidence, as desired or
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`necessary.
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`For example, and not limitation, Patent Owner and Petitioner conducted a
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`Markman claim construction hearing in the underlying litigation on September 20,
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`2018. Patent Owner has disputed the claim constructions proposed by Petitioner in
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`that proceeding, and the parties await the Court’s ruling. See Pet. at 8. For purposes
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`of this Preliminary Response, Patent Owner will not offer its proposed constructions,
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`as Petitioner’s grounds fail even under its proposed constructions. Patent Owner
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`submits that the Board need not construe any claim term in a particular manner to
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`arrive at the conclusion that the Petition is substantively deficient. Wellman, Inc. v.
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`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“need only be construed
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`to the extent necessary to resolve the controversy”).
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`IV. LISTING OF FACTS
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`The Petition did not include a Statement of Material Facts to be Admitted to
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`Denied.
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`V.
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`THE PETITION DOES NOT SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS ON ANY GROUND
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`Petitioner has the burden of proof to establish through its Petition that trial
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`should be instituted. 37 C.F.R. § 42.108(c). This burden never shifts to Patent
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`Owner. 35 U.S.C. 316(e).
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`Because the Petition only advances obviousness as a basis for review, the
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`Petition must demonstrate to the Board that the differences between the subject
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`matter of claim 1 and the prior art are such that claim 1, as a whole, would have been
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`obvious at the time the invention was made to a person having ordinary skill in the
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`art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The demonstration of
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`obviousness involves the following four questions, for which Petitioner bears the
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`burden of proof: (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of skill in the art;
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`and (4) where in evidence, so-called secondary considerations. Graham v. John
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`Deere Co., 383 U.S. 1, 17 (1966). The Petition must have a clear articulation of why
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`a POSITA would have been motivated to combine the references in the manner
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`described. In re Magnum Oil Tools Int’l, Ltd, 829 F.3d 1364, 1380 (Fed. Cir. 2016.)
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`(holding “a petitioner cannot employ mere conclusory statements. The petitioner
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`must instead articulate specific reasoning, based on evidence of record, to support
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`the legal conclusion of obviousness). To establish obviousness of a claimed
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`invention, all the claim limitations must be taught or suggested by the prior art as
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`combined. See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
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`2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974). Thus, the Petition “must
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`specify where each element of the claim is found in the prior art patents or printed
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`publications relied upon.” 37 C.F.R. § 42.104(b)(4); see also Arendi S.A.R.L. v.
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`Apple, Inc., 832 F.3d 1355 (Fed. Cir. 2016) (reversing Board obviousness
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`determination based on “common sense” was conclusory and unsupported by
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`substantial evidence).
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`As shown below, the Petition fails to provide the Board with credible evidence
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`or argument concerning several key elements of Claim 1.
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`A.
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`The Petition Does Not Show that Hapka Discloses “Patching”
`“Operating Code”
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`While the Petition admits, as it must, that Hapka does not disclose “patching
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`of operating code” as required by Claim 1 (Pet. at 30), Hapka does not disclose
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`modifying, changing or updating “operating code” in any fashion.
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`Hapka (Ex. 1008) is entitled “Remote Control of Engine Idling Time.” A
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`POSITA reading Hapka would understand that this system allows a truck fleet
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`manager, for example, to wirelessly and remotely modify the value of a parameter
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`used by an engine algorithm. See, e.g., Abstract. Hapka has absolutely no disclosure
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`of “patching” or even modifying operating code on the vehicle. The Petition
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`erroneously equates remotely changing the value of a variable or parameter (i.e,
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`data) used by an engine algorithm, such as engine idling time, with patching
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`operating code as required by Claim 1. That is error.
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`Hapka’s specification consistently describes the invention as transmitting
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`“data” over satellite or RF link to a communications system onboard a vehicle. The
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`“data” is consistently described as “commands” and “control messages” (See, e.g.,
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`Ex. 1008 at 4:28; 6:40, 6:44; 7:11; 7:27). The following passage from Hapka
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`captures the essence of its disclosure (emphasis supplied):
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`[With reference to FIG. 3], [i]n block 302, the remote command
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`interface device 8 then analyzes the data on data bus 28 to determine if
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`the data is a remote engine control command sent from a remote use to
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`modify existing engine parameters to control engine idle time or a
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`similar engine function.
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`Ex. 1008 at 7:54-58.
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`Notably, Hapka discloses that while the system contains “software” or
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`“firmware” (e.g., “operating code”), nowhere does Hapka disclose that this
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`“software” or “firmware” is modified, let alone “patched” as required by Claim 1.
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`Furthermore, remote command interface device 8 is provided with
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`software or firmware that implements the functions described herein
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`with reference to the flowchart of FIG. 3. The software provided with
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`the remote command interface device 8 translates the data on bus 28.
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`Engine control system 36 comprises an engine control device 9 which
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`includes a microprocessor 33 for storing and, processing, and
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`implementing a sequence of data commands received from data bus
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`29.
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`Ex. 1008 at 4:21-29 (emphasis added). Hapka’s “parameter” or “data” used by an
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`engine control algorithm is not “operating code,” as Petitioner’s expert erroneously
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`opines.
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`Thus, the Petition is based entirely on a fundamentally flawed reading of
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`Hapka supplied by Petitioner’s expert.1 For this reason alone, the Petition fails to
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`carry the required burden to show a reasonable likelihood of unpatentability of Claim
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`1 by combing Hapka with Parillo.
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`B.
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`The Petition Does Not Show That Either Hapka Or Parillo
`Discloses “Merging” a “Patch” with “Operating Code”
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`The Petition also admits that Hapka does not disclose a “patch” for operating
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`code. Pet. at 49 (“Hapka does not explicitly disclose that the modification to the
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`1 Petitioner’s expert also relies on claims 1, 15, and 22 of Hapka to support his opinions. These claims fail
`to support Petitioner’s arguments just like Hapka’s specification fails to support its arguments. More
`fundamentally, however, Petitioner has failed to prove that any of these three claims is entitled to the §
`102(e) prior art date of 10/19/1994. The Board may take official notice that Hapka filed amendments in
`response to rejections on 3/25/1996 and again on 7/31/1996, with both dates being after the priority date
`of the ’275 Patent. To the extent Petitioner argues these claims have disclosure different from the
`specification, Petitioner had the burden to prove the prior art date for that additional disclosure. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015). Petitioner failed to do this.
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`existing algorithm was a partial update and not a wholesale replacement, …”).
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`Because Hapka fails to disclosure an operating code “patch,” Hapka also necessarily
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`fails to disclose “merging” the undisclosed “patch” into current operating code.
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`Parillo fares no better.
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`Parillo is entitled “Wireless Motor Vehicle Diagnostic and Software Upgrade
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`System.” Yet, Parillo never identifies how that “software” is upgraded. Searching
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`the text of Parillo for the word “software” reveals 23 occurrences, 15 of which are
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`the in the preambles to the claims. The other instances are always used in the phrase
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`“diagnostic and software upgrade system” or other similar label. In other words,
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`while Parillo purports to “upgrade software,” Parillo has no disclosure of how such
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`software is upgraded.
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`What Parillo discloses is very similar to what Hapka discloses: wireless
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`transmission of vehicle operating conditions and variables. The following portion
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`of Parillo conveys the gist of its disclosure (emphasis added). With reference to FIG.
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`2,
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`[m]icrocomputer 25 contains internal memory including read-only-
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`memories (ROMs) 40 and 41 and a random-access-memory (RAM) 42.
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`It should be understood that a large variety of memories could be
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`utilized, including "flash" EEPROMs, EPROMs, etc. Generally, ROM
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`40 contains programs utilized for the normal operation of vehicle 15.
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`The programs utilize constants stored in RAM 42 to perform the
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`required functions. As a very simplified example, Ram 42 contains
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`the constant, 35 pounds of pressure, which is the desired tire pressure.
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`Each time the sensors in the tires are interrogated by microprocessor 25
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`the stored program utilizes the stored constant, 35 pounds, to compare
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`to the actual sensed tire pressure. If the pressure does not compare
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`within a predetermined range contained in the program, audio-visual
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`display 28 indicates that there is a problem. Similarly, an engine timing
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`program provides energy to the spark plugs to detonate each cylinder at
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`the correct time relative to the mechanical position of the piston in the
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`cylinder. A preferred constant for this timing is again stored in RAM
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`42.
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`Through use and age, parts of vehicle 15 wear and change. This wear
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`and change causes very slight, or gradual, changes in the timing
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`(relative movement) of the mechanical parts in vehicle 15. Generally,
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`this change can be so gradual that the operator may not even notice the
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`diminished, or impaired, operation. However, the timing information,
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`or history,
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`is stored
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`in memory 27 by microprocessor 25.
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`Simultaneously, information from each of the other sensors 22 is stored
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`in memory 27. It will be understood that, when specific programs are
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`upgraded or new algorithms are developed/adapted, the upgrade or
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`complete new program is transmitted to microprocessor 25 during a
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`time that automotive portion 20 is not being used.
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`Ex. 1009 at 4:3-64.
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`The Board will search in vain for a more detailed disclosure of “upgrading
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`programs” or “software” in Parillo than that provided by the last sentence of the
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`quoted material. In other words, there is no disclosure in Parillo of transmitting “at
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`least one patch message” to a vehicle; the vehicle creating “patched operating code
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`by merging the at least one patch with current operating code;” and then “switching
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`execution to the patched operating code,” as required by Claim 1.
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`The Petition stretches the disclosure of both Hapka and Parillo beyond
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`recognition. When the Board reads Hapka and Parillo as a POSITA would have read
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`them, it becomes clear that the Petition has failed to discharge the burden of
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`demonstrating through credible evidence and argument that what these references
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`disclose, why a POSITA would be motivated to combine them, and that a
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`combination of Hapka and Parillo, or Hapka, Parillo and Wortham would contain
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`each and every element of Claim 1. Because the Petition fails this standard, the
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`Board should exercise its discretion to deny institution of trial.
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`VI. CONCLUSION
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`For at least the reasons set forth above, Patent Owner respectfully requests
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`that the Board exercise its discretion and deny institution of trial because of
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`deficiencies in the Petition.
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`Date: December 11, 2018
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`Respectfully submitted,
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`Case IPR2018-01553
`Patent No. 5,699,275
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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 Preliminary Response to
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`Petition complies with the type-volume limitation of 37 C.F.R. § 42.21(b)(1)
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`because it contains fewer than the limit of 14,000 words, as determined by the word
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`processing program used to prepare the document, excluding the parts of the
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`document exempted by 37 C.F.R. § 42.24(a)(1).
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`Date: December 11, 2018
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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 SERVICE
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`Pursuant to 37 C.F.R. §42.6(e), I certify that an electronic copy of the
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`foregoing PATENT OWNER’S PRELIMINARY RESPONSE was served along
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`with any accompanying exhibits via the Patent Review Processing System to
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`Petitioner’s counsel.
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`Date: December 11, 2018
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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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