Case IPR2019-00111
`Patent No. 5,699,275
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`GOOGLE LLC.,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC.,
`Patent Owner.
`
`___________________________
`
`IPR2019-00111
`U.S. Patent No. 5,699,275
`___________________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`PURSUANT TO 37 C.F.R. §42.107(a)
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`Patent No. 5,699,275
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`GOOGLE LLC.,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC.,
`Patent Owner.
`
`___________________________
`
`IPR2019-00111
`U.S. Patent No. 5,699,275
`___________________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
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`Case IPR2019-00111
`Patent No. 5,699,275
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`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ........................................................................................ 1
`RELATED INTER PARTES REVIEW CASES ........................................... 2
`A.
`Petitions Based Primarily on Hapka .................................................. 2
`B.
`Petitions Based Primarily on Sugita and Ballard ............................... 3
`III. PATENT OWNER’S RESERVATION OF RIGHTS ................................. 3
`IV. LISTING OF FACTS ................................................................................... 4
`V.
`THE PETITION DOES NOT SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS ON ANY GROUND ................................... 5
`A.
`The Petition Does Not Show that Hapka
`Discloses “Patching” “Operating Code” ............................................ 7
`The Petition Does Not Show That Either Hapka
`Or Parillo Discloses “Merging” a “Patch” with
`“Operating Code” ............................................................................... 9
`VI. CONCLUSION ........................................................................................... 12
`CERTIFICATE OF COMPLIANCE .................................................................... 13
`CERTIFICATE OF SERVICE ............................................................................. 14
`
`B.
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`Case IPR2019-00111
`Patent No. 5,699,275
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`I.
`
`INTRODUCTION
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`As a threshold matter, the Board should note that this petition for Inter Partes
`
`Review is substantively identical to the petition filed by Samsung Electronics Co.,
`
`Ltd. (IPR2018-01553), and to which Patent Owner has filed a preliminary response.
`
`By substantively identical, we mean the identified claim is the same (Claim 1); the
`
`identified art is identically the same (Hapka, Parillo, Wortham); and the arguments
`
`presented are identically the same. From Patent Owner’s detailed review, the only
`
`differences relate to the specific petitioners. See Institution Decision in IPR2018-
`
`01554 at 27 – 31.
`
`The Board also should note that this Preliminary Response is, therefore,
`
`substantively identical to the Preliminary Response filed by Patent Owner in IPR
`
`2018-01553.
`
`For the reasons presented below, Iron Oak Technologies, LLC (Patent Owner)
`
`respectfully requests that the Board exercise its discretion to deny the Petition for
`
`Inter Partes Review filed by Google LLC., (Petitioner) concerning U.S. Patent No.
`
`5,699,275 (’275 patent).
`
`35 U.S.C. § 314(a) sets forth the standard by which an IPR may be instituted:
`
`The Director may not authorize an inter partes review to be instituted
`unless the Director determines that the information presented in the
`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
`prevail with respect to at least 1 of the claims challenged in the petition.
`
`Thus, it is not the Board’s burden or duty to shift through the art relied upon by
`
`Petitioner to see if a reasonable likelihood of unpatentability could have been shown
`
`for Claim 1. Rather, it is the Board’s duty to determine whether the arguments and
`
`evidence actually presented in the Petition demonstrate such likelihood in the first
`
`instance. The Petition fails to meet this standard.
`
`Each ground advanced in the Petition fails because the Petition does not
`
`establish the content of each reference as would have been understood by a person
`
`of ordinary skill in the art (hereafter, POSITA). Graham v. John Deere Co., 383
`
`U.S. 1, 17 (1966) (“Under §103, the scope and content of the prior art are to be
`
`determined; …”). The properly understood content of the cited art demonstrates that
`
`they do not render obvious the subject matter of Claim 1 of the ’275 Patent.
`
`For at least these reasons, the Petition should be denied in its entirety.
`
`II. RELATED INTER PARTES REVIEW CASES
`
`IPR Petitions currently pending against the ’275 Patent are listed below. As
`
`of this filing no trial has been instituted against the ’275 Patent.
`
`A.
`
`Petitions Based Primarily on Hapka
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`A petition for inter partes review was earlier filed by Samsung Electronics
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`Co., Ltd. (IPR2018-01553) contending that claim 1 of the ’275 patent is obvious
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`over Hapka and Parillo; or obvious over Hapka, Parillo and Wortham. As noted
`
`above, the Samsung petition is substantively identical, if not absolutely identical, to
`
`the subject Petition.
`
`B.
`
`Petitions Based Primarily on Sugita and Ballard
`
`A petition for inter partes review was earlier filed by Samsung Electronics
`
`Co., Ltd. (IPR2018-01552) contending that claim 1 of the ’275 patent is anticipated
`
`by Sugita; or rendered obvious over Sugita and Wortham; or rendered obvious over
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`Ballarad and Shimizu.
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`A petition for inter partes review was later filed by Petitioner, Google LLC
`
`(IPR2019-0110) contending that claim 1 of the ’275 patent is anticipated by Sugita;
`
`or rendred obvious over Sugita and Wortham; or rendered obvious over Ballard and
`
`Shimizu. It should be noted that the Google petition is substantively identical, if not
`
`absolutely identical, to IPR2018-01552 filed by Samsung..
`
`A petition for inter partes review has been filed by Microsoft Corporation
`
`(IPR2019-0106) contending that claim 1 of the ’275 patent is anticipated by Sugita;
`
`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
`
`IPR2018-01552 filed by Samsung, and IPR2019-0110 filed by Google.
`
`This Preliminary Response addresses only the subject Petition.
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`III. PATENT OWNER’S RESERVATION OF RIGHTS
`
`In this Preliminary Response, Patent Owner has chosen to point out only
`
`certain errors in the Petition, and to present only certain arguments why trial should
`
`not be instituted on any of the grounds presented in the Petition. This Preliminary
`
`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
`
`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
`
`of this Preliminary Response, Patent Owner will not offer its proposed constructions,
`
`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.
`
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“need only be construed
`
`to the extent necessary to resolve the controversy”).
`
`IV. LISTING OF FACTS
`
`The Petition did not include a Statement of Material Facts to be Admitted to
`
`Denied.
`
`V.
`
`THE PETITION DOES NOT SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS ON ANY GROUND
`
`Petitioner has the burden of proof to establish through its Petition that trial
`
`should be instituted. 37 C.F.R. § 42.108(c). This burden never shifts to Patent
`
`Owner. 35 U.S.C. 316(e).
`
`Because the Petition only advances obviousness as a basis for review, the
`
`Petition must demonstrate to the Board that the differences between the subject
`
`matter of claim 1 and the prior art are such that claim 1, as a whole, would have been
`
`obvious at the time the invention was made to a person having ordinary skill in the
`
`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
`
`a POSITA would have been motivated to combine the references in the manner
`
`described. In re Magnum Oil Tools Int’l, Ltd, 829 F.3d 1364, 1380 (Fed. Cir. 2016.)
`
`(holding “a petitioner cannot employ mere conclusory statements. The petitioner
`
`must instead articulate specific reasoning, based on evidence of record, to support
`
`the legal conclusion of obviousness). To establish obviousness of a claimed
`
`invention, all the claim limitations must be taught or suggested by the prior art as
`
`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
`
`specify where each element of the claim is found in the prior art patents or printed
`
`publications relied upon.” 37 C.F.R. § 42.104(b)(4); see also Arendi S.A.R.L. v.
`
`Apple, Inc., 832 F.3d 1355 (Fed. Cir. 2016) (reversing Board obviousness
`
`determination based on “common sense” was conclusory and unsupported by
`
`substantial evidence).
`
`As shown below, the Petition fails to provide the Board with credible evidence
`
`or argument concerning several key elements of Claim 1.
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`A.
`
`The Petition Does Not Show that Hapka Discloses “Patching”
`“Operating Code”
`
`While the Petition admits, as it must, that Hapka does not disclose “patching
`
`of operating code” as required by Claim 1 (Pet. at 30), Hapka does not disclose
`
`modifying, changing or updating “operating code” in any fashion.
`
`Hapka (Ex. 1008) is entitled “Remote Control of Engine Idling Time.” A
`
`POSITA reading Hapka would understand that this system allows a truck fleet
`
`manager, for example, to wirelessly and remotely modify the value of a parameter
`
`used by an engine algorithm. See, e.g., Abstract. Hapka has absolutely no disclosure
`
`of “patching” or even modifying operating code on the vehicle. The Petition
`
`erroneously equates remotely changing the value of a variable or parameter (i.e,
`
`data) used by an engine algorithm, such as engine idling time, with patching
`
`operating code as required by Claim 1. That is error.
`
`Hapka’s specification consistently describes the invention as transmitting
`
`“data” over a satellite or RF link to a communications system onboard a vehicle.
`
`The “data” is consistently described as “commands” and “control messages” (See,
`
`e.g., Ex. 1008 at 4:28; 6:40, 6:44; 7:11; 7:27). The following passage from Hapka
`
`captures the essence of its disclosure (emphasis supplied):
`
`[With reference to FIG. 3], [i]n block 302, the remote command
`interface device 8 then analyzes the data on data bus 28 to determine if
`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
`similar engine function.
`
`Ex. 1008 at 7:54-58.
`
`Notably, Hapka discloses that while the system contains “software” or
`
`“firmware” (e.g., “operating code”), nowhere does Hapka disclose that this
`
`“software” or “firmware” is modified, let alone “patched” as required by Claim 1.
`
`Furthermore, remote command interface device 8 is provided with
`software or firmware that implements the functions described herein
`with reference to the flowchart of FIG. 3. The software provided with
`the remote command interface device 8 translates the data on bus 28.
`Engine control system 36 comprises an engine control device 9 which
`includes a microprocessor 33 for storing and, processing, and
`implementing a sequence of data commands received from data bus
`29.
`
`Ex. 1008 at 4:21-29 (emphasis added). Hapka’s “parameter” or “data” used by an
`
`engine control algorithm is not “operating code,” as Petitioner’s expert erroneously
`
`opines.
`
`Thus, the Petition is based entirely on a fundamentally flawed reading of
`
`Hapka supplied by Petitioner’s expert.1 For this reason alone, the Petition fails to
`
`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 as 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
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`carry the required burden to show a reasonable likelihood of unpatentability of Claim
`
`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”
`
`The Petition also admits that Hapka does not disclose a “patch” for operating
`
`code. Pet. at 49 (“Hapka does not explicitly disclose that the modification to the
`
`existing algorithm was a partial update and not a wholesale replacement, …”).
`
`Because Hapka fails to disclosure an operating code “patch,” Hapka also necessarily
`
`fails to disclose “merging” the undisclosed “patch” into current operating code.
`
`Parillo fares no better.
`
`Parillo is entitled “Wireless Motor Vehicle Diagnostic and Software Upgrade
`
`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
`
`the in the preambles to the claims. The other instances are always used in the phrase
`
`“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
`
`software is upgraded.
`
`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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`What Parillo discloses is very similar to what Hapka discloses: wireless
`
`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.
`
`2,
`
`[m]icrocomputer 25 contains internal memory including read-only-
`memories (ROMs) 40 and 41 and a random-access-memory (RAM) 42.
`It should be understood that a large variety of memories could be
`utilized, including "flash" EEPROMs, EPROMs, etc. Generally, ROM
`40 contains programs utilized for the normal operation of vehicle 15.
`The programs utilize constants stored in RAM 42 to perform the
`required functions. As a very simplified example, Ram 42 contains
`the constant, 35 pounds of pressure, which is the desired tire pressure.
`Each time the sensors in the tires are interrogated by microprocessor 25
`the stored program utilizes the stored constant, 35 pounds, to compare
`to the actual sensed tire pressure. If the pressure does not compare
`within a predetermined range contained in the program, audio-visual
`display 28 indicates that there is a problem. Similarly, an engine timing
`program provides energy to the spark plugs to detonate each cylinder at
`the correct time relative to the mechanical position of the piston in the
`cylinder. A preferred constant for this timing is again stored in RAM
`42.
`
`Through use and age, parts of vehicle 15 wear and change. This wear
`and change causes very slight, or gradual, changes in the timing
`(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
`diminished, or impaired, operation. However, the timing information,
`or history,
`is stored
`in memory 27 by microprocessor 25.
`Simultaneously, information from each of the other sensors 22 is stored
`in memory 27. It will be understood that, when specific programs are
`upgraded or new algorithms are developed/adapted, the upgrade or
`complete new program is transmitted to microprocessor 25 during a
`time that automotive portion 20 is not being used.
`
`Ex. 1009 at 4:3-64.
`
`The Board will search in vain for a more detailed disclosure of “upgrading
`
`programs” or “software” in Parillo than that provided by the last sentence of the
`
`quoted material. In other words, there is no disclosure in Parillo of transmitting “at
`
`least one patch message” to a vehicle; the vehicle creating “patched operating code
`
`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
`
`recognition. When the Board reads Hapka and Parillo as a POSITA would have read
`
`them, it becomes clear that the Petition has failed to discharge the burden of
`
`demonstrating through credible evidence and argument that what these references
`
`disclose, why a POSITA would be motivated to combine them, and that a
`
`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: February 15, 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 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).
`
`Date: February 15, 2019
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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: February 15, 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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