`
`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________________________________
`
`
`ZTE (USA), INC., HTC CORPORATION, and
`HTC AMERICA, INC.,
`
`Petitioners,
`
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`Patent Owner.
`
`
`
`Patent No. 8,213,970
`Filing Date: November 26, 2008
`Issue Date: July 3, 2012
`
`Inventor: Malcolm K. Beyer
`Title: METHOD OF UTILIZING FORCED ALERTS FOR
`INTERACTIVE REMOTE COMMUNICATIONS
`
`
`_________________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2019-00485
`_________________________________________________________________________
`
`
`
`

`

`I.
`
`II.
`
`III.
`
`
`
`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`
`TABLE OF CONTENTS
`
`Page(s)
`
`INTRODUCTION ........................................................................................... 1
`
`THE JOINDER PETITION IS BARRED UNDER 35 U.S.C.
`§ 315(A) WITH RESPECT TO ZTE .............................................................. 4
`
`PETITIONERS HAVE NOT DEMONSTRATED A
`REASONABLE LIKELIHOOD OF SUCCESS FOR THE
`GROUNDS ADVANCED IN THE JOINDER PETITION, AND
`THE JOINDER PETITION SHOULD BE DENIED ..................................... 6
`
`A.
`
`Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103 ...................................................................................................... 6
`
`B.
`
`Kubala Does Not Disclose Automatic Acknowledgment ..................... 9
`
`1.
`
`2.
`
`3.
`
`Petitioner relies on Kubala alone to teach the claimed
`automatic acknowledgment in claim limitation 1.5 .................... 9
`
`The Joinder Petition does not specify any element in
`Kubala that teaches the automatic acknowledgment ................10
`
`The Joinder Petition does not allege as obvious the
`automatic acknowledgment .......................................................11
`
`IV. THE GENERAL PLASTIC FACTORS FAVOR DENIAL OF
`INSTITUTION ..............................................................................................16
`
`A.
`
`B.
`
`The Joinder Petition Is A Serial Petition .............................................16
`
`The General Plastic Factors Favor Denial of This Joinder
`Petition .................................................................................................16
`
`V.
`
`CONCLUSION ..............................................................................................20
`
`
`
`i
`
`

`

`
`
`Cases
`
`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Abiomed v. Maquest Cardiovascular,
`Case No. IPR2017-01204 (P.T.A.B., October 23, 2017) ................................... 12
`
`Apple, Inc. v. Contentguard Holdings, Inc.,
`Case No. IPR2015-00355 (P.T.A.B. June 26, 2015) ............................................ 6
`
`Application of Arkley, 455 F.2d. 586, 587-88 (C.C.P.A. 1972) .............................. 12
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ............................................................................ 7
`
`Cisco Systems v. Chrimar Systems,
`Case No. IPR2018-01511 (P.T.A.B. Jan. 31, 2019) ............................................. 5
`
`Click-To-Call Tech., LP v. Ingenio, Inc.,
`899 F.3d 1321 (Fed. Cir. 2018) ............................................................................ 5
`
`Colas Solutions v. Blacklidge Emulsions,
`Case No. IPR2018-00243 (P.T.A.B. Feb. 27, 2018) ............................................ 5
`
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`Case No. IPR2016-01357 (P.T.A.B. Sept. 6, 2017) ....................................... 3, 19
`
`Google LLC v. AGIS Software Development LLC,
`Case No. IPR2018-01079 (P.T.A.B. Nov. 20, 2018) ........................................... 1
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 6
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ............................................................................ 8
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 7
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................ 6, 14
`
`ii
`
`

`

`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
` Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) ................................................. 7
`
`
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 12
`
`Netapp, Inc. v. Realtime Data LLC,
`Case No. IPR2017-01195 (P.T.A.B. Oct. 12, 2017) .......................................... 17
`
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .............................................................................. 7
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .......................................................................... 13
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) ............................................................................ 6
`
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) ............................................................................ 8
`
`ZTE (USA) Inc. v. AGIS Software Development LLC, et al.,
`4:18-cv-06185-HSG (N.D. Cal. Oct. 9, 2018) .................................................. 2, 4
`
`Statutes
`
`35 U.S.C. § 103 .......................................................................................................... 6
`
`35 U.S.C. § 314(a) ................................................................................................... 16
`
`35 U.S.C. § 315 .................................................................................................passim
`
`35 U.S.C. § 316(a)(11) ............................................................................................. 18
`
`Other Authorities
`
`37 C.F.R. § 42.104 ..................................................................................................... 8
`
`37 C.F.R. § 42.104(b)(4)-(5) ................................................................................ 9, 15
`
`37 C.F.R. § 42.108(a) ............................................................................................... 16
`
`
`
`iii
`
`

`

`
`
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`
`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`
`LIST OF EXHIBITS
`
`
`Description
`Correspondence from Enrique Iturralde to Lionel Lavenue, dated
`January 28, 2019.
`Correspondence from Lionel Lavenue to Enrique Iturralde, dated
`January 30, 2019.
`HTC’s and ZTE’s Invalidity Contentions in the District Court
`Litigation
`HTC’s and ZTE’s Election of Prior Art in the District Court
`Litigation
`Transcript of March 21, 2019 Deposition of David Hilliard
`Williams
`
`iv
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`
`Patent Owner AGIS Software Development LLC (“AGIS”) submits this
`
`preliminary response in opposition to a petition (Paper 3, “Joinder Petition”) to
`
`institute an inter partes review of claims 1 and 3-9 (the “Challenged Claims”) of
`
`U.S. Patent No. 8,213,970 (the “’970 patent”) filed on December 20, 2018.
`
`Petitioners HTC Corporation and HTC America, Inc. (collectively, “HTC”)1, and
`
`ZTE (USA), Inc. (“ZTE”), (collectively, “Petitioners”) concurrently filed a motion
`
`for joinder (Paper 4, “Joinder Motion”) requesting joinder to IPR2018-01079 (the
`
`“Google IPR”) which has been instituted by the Board. See Google LLC v. AGIS
`
`Software Development LLC, Case No. IPR2018-01079, Paper 9 (P.T.A.B. Nov. 20,
`
`2018).
`
`The Joinder Petition should be denied for at least three reasons: (1) the
`
`Joinder Petition is statutorily barred under 35 U.S.C. §§ 315(a) because ZTE filed
`
`a declaratory judgment action alleging invalidity of the ’970 patent in the Northern
`
`District of California; (2) the Joinder Petition fails to specify which element in
`
`1 On March 5, 2019 and April 3, 2019, the District Court granted Patent Owner’s
`
`and HTC’s joint motion to stay all deadlines after notice of settlement. Under the
`
`terms of the agreement, Patent Owner and HTC will be obligated to file a joint
`
`motion to terminate this proceeding. See AGIS Software Development LLC v. HTC
`
`Corp., 2:17-cv-00514, Dkt. 274 (E.D. Tex. Apr. 3, 2019)
`
`1
`
`

`

`
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`IPR2019-00485
`U.S. Patent No. 8,213,970
`Kubala corresponds to the claimed automatic acknowledgment element of claim
`
`
`
`limitation 1.5 and to explain how the Challenged Claims are obvious in view of the
`
`single reference; and (3) the Joinder Petition is an improper serial petition to the
`
`Google IPR.
`
`First, the Joinder Petition is statutorily barred under 35 U.S.C. § 315(a). On
`
`October 9, 2018, ZTE filed a complaint for declaratory judgment in the Northern
`
`District of California alleging invalidity of the ’970 patent. ZTE (USA) Inc. v.
`
`AGIS Software Development LLC, et al., 4:18-cv-06185-HSG, Dkt. 1 at *1 (N.D.
`
`Cal. Oct. 9, 2018). Petitioners cannot file a civil action challenging the validity of
`
`the ’970 patent before the date of the Joinder Petition, as it has done here, and the
`
`Joinder Petition is thus statutorily barred under 35 U.S.C. § 315(a).
`
`Second, the Joinder Petition submits that Kubala alone discloses automatic
`
`acknowledgment but identifies no particular embodiment or element that teaches
`
`the claimed limitation. The Joinder Petition fails to include an obviousness
`
`analysis for the automatic acknowledgment element of claim limitation 1.5. Pet.
`
`at 30. Petitioners fail to identify the differences between the prior art references
`
`and the Challenged Claims with respect to the automatic acknowledgment.
`
`Petitioners provide no motivation to combine any embodiments or teachings within
`
`the single reference. Petitioners’ allegations regarding the understanding of a
`
`2
`
`

`

`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`person of ordinary skill in the art are based on a “configurable parameter” teaching
`
`
`
`that lacks evidentiary support in the record.
`
`Third, the Joinder Petition is a serial petition that should be analyzed under
`
`the General Plastic factors which the Board has made precedential. Gen. Plastic
`
`Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper No. 19 at 15-
`
`19 (P.T.A.B. Sept. 6, 2017). Petitioners concede that this Joinder Petition “is
`
`substantively the same as” the Google IPR (Paper 3 at 1) and “challenge[s] the
`
`same claims of the ’970 patent on the same grounds relying on the same prior art
`
`and evidence, including a declaration identical in substance from the same expert.”
`
`Paper 4 at 1. Accordingly, the General Plastic factors weigh in favor of denying
`
`institution.
`
`While Patent Owner explicitly reserves the right to present additional
`
`arguments, the deficiencies of the Joinder Petition noted herein are sufficient for
`
`the Board to find that the Joinder Petition is statutorily barred under 35 U.S.C.
`
`§ 315(a) and that Petitioners have not met their burden to demonstrate a reasonable
`
`likelihood that they would prevail in showing unpatentability of any of the
`
`Challenged Claims.
`
`3
`
`

`

`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`II. THE JOINDER PETITION IS BARRED UNDER 35 U.S.C.
`§ 315(A) WITH RESPECT TO ZTE
`
`
`
`The Joinder Petition is statutorily barred under 35 U.S.C. § 315(a) because
`
`ZTE filed a civil action alleging invalidity of the ’970 patent before filing the
`
`Joinder Petition. On October 9, 2018, ZTE filed a complaint for declaratory
`
`judgment in the Northern District of California alleging invalidity of the ’970
`
`patent. ZTE (USA) Inc. v. AGIS Software Development LLC, et al., 3:18-cv-06185-
`
`HSG, Dkt. 1 at *1 (N.D. Cal. Oct. 9, 2018). After receiving the Joinder Petition,
`
`Patent Owner informed ZTE that its Joinder Petition challenging the ’970 patent
`
`was prohibited under 35 U.S.C. § 315(a)(1) and requested withdrawal of the
`
`Joinder Petition. Exhibit 2001, Correspondence from E. Iturralde to L. Lavenue,
`
`dated January 28, 2019. ZTE refused to withdraw its Joinder Petition without
`
`addressing 35 U.S.C. § 315(a)(1). Exhibit 2002, Correspondence from L. Lavenue
`
`to E. Iturralde, dated January 30, 2019. Shortly thereafter, on February 5, 2019,
`
`ZTE reversed its position by amending its complaint in the declaratory judgment
`
`action to remove the invalidity allegations against the ’970 patent. ZTE (USA) Inc.
`
`v. AGIS Software Development LLC, et al., 4:18-cv-06185-HSG, Dkt. 39 at *1
`
`(N.D. Cal. Feb. 5, 2019). But, the harm had already been done.
`
`The plain language of 35 U.S.C. § 315(a)(1) reads “[a]n inter partes review
`
`may not be instituted if, before the date on which the petitioner for such a review is
`
`4
`
`

`

`
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`IPR2019-00485
`U.S. Patent No. 8,213,970
`filed, the petitioner or real party in interest filed a civil action challenging the
`
`
`
`validity of a claim of the patent.” The Board has held expressly that a motion for
`
`joinder does not exempt the Joinder Petition from the statutory bar of 35 U.S.C.
`
`§ 315(a)(1), and the instant circumstances warrant a denial of institution. Colas
`
`Solutions v. Blacklidge Emulsions, Case No. IPR2018-00243, Paper 10 at *6, 9
`
`(P.T.A.B. Feb. 27, 2018).
`
`Amending its declaratory judgment complaint to remove invalidity grounds
`
`does not cure the Joinder Petition. The Federal Circuit has held that a statutory bar
`
`in 35 U.S.C. § 315 applies after voluntary dismissal of a civil action. Click-To-
`
`Call Tech., LP v. Ingenio, Inc., 899 F.3d 1321, 1338 (Fed. Cir. 2018). The Board
`
`has confirmed that Click-To-Call applies to 35 U.S.C. § 315(a)(1) and that the
`
`statute bars institution, even though Petitioner voluntarily dismissed its earlier civil
`
`action alleging invalidity of the patent. Cisco Systems v. Chrimar Systems, Case
`
`No. IPR2018-01511, Paper 11 at *2, 8 (P.T.A.B. Jan. 31, 2019). Accordingly,
`
`because ZTE filed a civil action for declaratory judgment of invalidity of the ’970
`
`patent before the filing date of the Joinder Petition, the Board must deny institution
`
`of the Joinder Petition under 35 U.S.C. § 315(a).
`
`5
`
`

`

`
`
`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`III. PETITIONERS HAVE NOT DEMONSTRATED A
`REASONABLE LIKELIHOOD OF SUCCESS FOR THE
`GROUNDS ADVANCED IN THE JOINDER PETITION, AND
`THE JOINDER PETITION SHOULD BE DENIED
`
`A. Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103
`
`The question of obviousness is resolved on the basis of underlying factual
`
`determinations, including: (1) the scope and content of the prior art, (2) any
`
`differences between the claimed subject matter and the prior art, (3) the level of
`
`skill in the art, and (4) where in evidence, so-called secondary considerations.
`
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 406 (2007). The question is not whether the differences
`
`themselves would have been obvious, but whether the claimed invention as a
`
`whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
`
`1530, 1537 (Fed. Cir. 1983).
`
`The Board has held that a failure to identify the differences between the
`
`claimed subject matter and the prior art is fatal to an obviousness challenge. See,
`
`Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-00355, Decision Denying
`
`Institution of Inter Partes Review, Paper 9 at 9-10 (P.T.A.B. June 26, 2015)
`
`(denying institution for failure to identify the differences between the claimed
`
`subject matter and the prior art).
`
`6
`
`

`

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`IPR2019-00485
`U.S. Patent No. 8,213,970
`In arriving at an obviousness determination, the Board must sufficiently
`
`
`
`explain and support the conclusions that the prior-art references disclose all the
`
`elements recited in the Challenged Claims and a relevant, skilled artisan not only
`
`could have made, but would have been motivated to combine all the prior art
`
`references in the way the patent claims and reasonably expected success. Pers.
`
`Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). That is, even
`
`if all the claim elements are found across a number of references, an obviousness
`
`determination must consider whether a person of ordinary skill in the art would
`
`have the motivation to combine those references. Intelligent Bio-Sys., Inc. v.
`
`Illumina Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016); Los Angeles
`
`Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d
`
`1049, 1067 (Fed. Cir. 2017) (vacating and remanding an obviousness
`
`determination, in part, because the Board did not make factual finding as to
`
`whether there was an apparent reason to combine all three prior art references to
`
`achieve the claimed invention and whether a person of skill in the art would have
`
`had a reasonable expectation of success from such a combination.) This
`
`combinability determination, as supported by an articulated motivation to combine,
`
`requires a plausible rationale as to why those prior art references would have
`
`worked together. Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed.
`
`Cir. 2013). Absent some articulated rationale, a “common sense” finding is no
`
`7
`
`

`

`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`different than the conclusory statement “would have been obvious.” In re Van Os,
`
`
`
`844 F.3d 1359, 1361 (Fed. Cir. 2017). Of additional importance, “knowledge of a
`
`problem and motivation to solve it are entirely different from motivation to
`
`combine particular references. . . .” Innogenetics, N.V. v. Abbott Labs., 512 F.3d
`
`1363, 1373 (Fed. Cir. 2008).
`
`This Joinder Petition is deficient because it fails to meet the fundamental
`
`requirements for demonstrating invalidity. As set forth above, Petitioners do not
`
`“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). Petitioners also neglected to
`
`submit and explain its obviousness allegations with evidentiary support and
`
`motivations supported by “some articulated reasoning with some rational
`
`underpinning.”2
`
`
`2 As a preliminary matter, Patent Owner agrees with and adopts the Board’s
`
`findings in the Google IPR that each and every element is not disclosed or
`
`suggested by the prior art references in Grounds 2-3, and that the Joinder Petition
`
`neither identifies nor describes how the references in Grounds 2-3 comprise a
`
`voice or text message and a forced message alert software packet. See Google
`
`IPR, Paper 9 at 36. The same findings and reasoning regarding Grounds 2-3 apply
`
`to the Joinder IPR.
`
`8
`
`

`

`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`B. Kubala Does Not Disclose Automatic Acknowledgment
`
`
`
`Claim limitation 1.5 requires “requiring the forced message alert software
`
`on said recipient PDA/cell phone to transmit an automatic acknowledgment to
`
`the sender PDA/cell phone as soon as said forced message alert is received by the
`
`recipient PDA/cell phone.”3 [claim limitation 1.5] and .
`
`The Joinder Petition does not specify any particular element in Kubala that
`
`discloses the automatic acknowledgement limitation above and fails to articulate a
`
`proper obviousness analysis based on specific portions of the evidence to support a
`
`finding of obviousness for the automatic acknowledgment limitation. 37 C.F.R.
`
`§ 42.104(b)(4)-(5). Specifically, the Joinder Petition is deficient because it (1) fails
`
`to specify an element in Kubala that discloses the claimed automatic
`
`acknowledgment, and (2) fails to submit any single reference obviousness analysis.
`
`1.
`
`Petitioner relies on Kubala alone to teach the claimed
`automatic acknowledgment in claim limitation 1.5
`
`The Joinder Petition alleges that Kubala alone discloses “requiring the
`
`forced message alert software on said recipient PDA/cell phone to transmit an
`
`automatic acknowledgment to the sender PDA/cell phone as soon as said forced
`
`
`3 Claim limitation 6.5 similarly recites “receiving automatic
`
`acknowledgements from the recipient PDA/cell phones that received the message
`
`a” and is thus deficient for the same reasons identified herein.
`
`9
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`

`

`
`
`IPR2019-00485
`U.S. Patent No. 8,213,970
`message alert is received by the recipient PDA/cell phone” of claim limitation 1.5.
`
`
`
`During the March 21, 2019 deposition of Mr. David Williams, Petitioner’s expert
`
`confirmed that he relied on Kubala alone to allege disclosure of claim limitation
`
`1.5. Ex. 2005, 49:21-50:24.
`
`
`
`
`
`Ex. 2005, 50:19-24. Because Petitioner alleges obviousness, not anticipation, the
`
`Joinder Petition must therefore (1) specify one or more elements in Kubala that
`
`teach the limitation, or (2) set forth a single reference obviousness combination
`
`based on the Kubala reference. The Joinder Petition fails to do so.
`
`2.
`
`The Joinder Petition does not specify any element in Kubala
`that teaches the automatic acknowledgment
`
`The Joinder Petition fails to specify any embodiment or element in Kubala
`
`that discloses the claimed automatic acknowledgment. Rather than identifying any
`
`element in an embodiment of Kubala that teaches the automatic
`
`acknowledgments, Petitioner cites to a background sentence in the Kubala
`
`document which reads “Other prior art solutions have provided the ability to
`
`generate return receipts. . .” Pet. at 30 (citing Exhibit 1005 at ¶ 0006). Kubala’s
`
`description of the background prior art provides no identification of a specific
`
`10
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`

`

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`IPR2019-00485
`U.S. Patent No. 8,213,970
`element or embodiment of Kubala that includes a read receipt or acknowledgment.
`
`
`
`To be clear, any citations in the Joinder Petition or the accompanying expert
`
`declaration which reference status codes are irrelevant to the automatic
`
`acknowledgment limitations because the status codes are returned in Kubala’s
`
`“reply e-mail” which is manually constructed and transmitted by a recipient and is
`
`not an automatic acknowledgement required by the claims. Ex. 2005, 59:19-21
`
`(“Q. Okay. Mandatory responses are different from automatic acknowledgements,
`
`correct? A. Correct.”). Accordingly, the Joinder Petition does not specify an
`
`element in Kubala that discloses the automatic acknowledgment of claim
`
`limitation 1.5.
`
`3.
`
`The Joinder Petition does not allege as obvious the
`automatic acknowledgment
`
`Because the Joinder Petition submits that Kubala alone discloses automatic
`
`acknowledgment and identifies no particular embodiment or element that teaches
`
`the claimed limitation, Petitioner must set forth a proper single reference
`
`obviousness analysis. Petitioner fails to submit a proper obviousness analysis for
`
`several reasons. First, the Joint Petition fails to include an obviousness analysis for
`
`claim limitation 1.5. Second, even if the Board were to consider a new argument
`
`of obviousness, which the Board should not, Petitioner fails to identify the
`
`differences between the prior art references and the Challenged Claims with
`
`11
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`

`

`
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`IPR2019-00485
`U.S. Patent No. 8,213,970
`respect to the automatic acknowledgment. Third, Petitioner provides no
`
`
`
`motivation to combine any embodiments or teachings within the single reference.
`
`Fourth, Petitioner’s allegations regarding the understanding of a person of ordinary
`
`skill in the art lack evidentiary support in the record.
`
`The Joinder Petition does not allege that the automatic acknowledgment
`
`element is obvious. Petitioner’s analysis for the automatic acknowledgment
`
`element of claim limitation 1.5 is limited to a single paragraph. Pet. at 30. This
`
`paragraph contains no statement or analysis of obviousness. Id. Petitioner fails to
`
`set forth an obviousness analysis between any Kubala embodiment reference with
`
`the background sentence about “other prior art solutions” in the Kubala document.
`
`When a Petitioner submits a single reference to disclose each and every element of
`
`a claim limitation, it is improper to combine multiple, distinct teachings from
`
`different embodiments without an obviousness analysis. See, e.g., Application of
`
`Arkley, 455 F.2d. 586, 587-88 (C.C.P.A. 1972); see also Net MoneyIN, Inc. v.
`
`VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“Thus, it is not enough that
`
`the prior art reference . . . includes multiple, distinct teachings that the artisan
`
`might somehow combine to achieve the claimed invention.”). The Board routinely
`
`denies institution based on the failure to identify how each and every element is
`
`described in a single embodiment of a reference without an obviousness analysis.
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`The Petition must show that these distinct embodiments are interchangeable or that
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`IPR2019-00485
`U.S. Patent No. 8,213,970
`a person of ordinary skill in the art would have combined those features. Abiomed
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`
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`v. Maquest Cardiovascular, Case IPR2017-01204, Paper 8 at *9 and 11 (P.T.A.B.,
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`Oct. 23, 2017). Petitioner fails to make this mandatory showing of obviousness
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`supported by the requisite motivation to combine the embodiments. In re Stepan
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`Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017) (In order to combine “multiple
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`embodiments from a single reference, or selecting from large lists of elements in a
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`single reference, there must be a motivation to make the combination and a
`
`reasonable expectation that such a combination would be successful, otherwise a
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`skilled artisan would not arrive at the claimed combination.”). The Joint Petition
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`contains no such analysis or motivation to combine teachings.
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`Even if the Board were to consider a new obviousness argument for this
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`limitation, the Joinder Petition lacks any semblance of a proper obviousness
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`analysis. Petitioner does not identify the differences between the prior art and the
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`Challenged Claims. As explained above, Petitioner maintains that Kubala
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`discloses return receipts without specifying that the reference of return receipts is
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`limited to the background section of the Kubala document and bears no relation to
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`any embodiment of Kubala as set forth in the Joinder Petition. The Joinder
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`Petition relies on numerous embodiments of the Kubala reference to allege
`
`disclosure of the Challenged Claims. During his March 21, 2019 deposition,
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`Petitioners’ expert, Mr. David Williams, confirmed that he relied on multiple
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`U.S. Patent No. 8,213,970
`embodiments of Kubala in his declaration alleging disclosure of the Challenged
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`
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`Claims. See, e.g., Ex. 2005, 20:13- 22:12. Mr. Williams confirmed that he did not
`
`distinguish between embodiments, instead focusing on “what’s in the embodiments
`
`that is important” and acknowledging that “not all embodiments were equally
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`applied.” See Ex. 2005, 21:5-7, 22:9-12.
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`The Joinder Petition does not identify a single embodiment in Kubala that
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`teaches the automatic acknowledgment limitations. Moreover, Kubala does not
`
`teach the complete limitation which requires automatic acknowledgement. . . as
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`soon as said forced message alert is received, and Petitioner fails to address these
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`remaining portions of the limitation with evidence or explanation. Petitioner
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`submits an unsupported and conclusory allegation that “Kubala teaches or suggests
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`both the structure and function required” by limitation 1.5, thus failing to ascertain
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`the differences between the prior art and the claims as required by KSR. Pet. at 30.
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`Rather than identifying for the Board whether any one (or acknowledging that
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`none) of the Kubala embodiments teaches the automatic acknowledgment
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`limitation, the Petitioner attempts to disguise a disclosure of background “other
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`prior art solutions” as a teaching in Kubala. Pet. at 30 (citing Exhibit 1005 at
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`¶ 0006). Petitioner cannot reconcile any differences between the prior art and the
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`Challenges Claims because none were identified.
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`Petitioner provides no motivation to combine the references for the purpose
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`
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`of arriving at the automatic acknowledgment element. The words “motivation”
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`and “reason” are absent from the single paragraph of allegations. Pet. at 30. At
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`best, the Board can only re-apply the same sentence regarding the prior art solution
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`to extract a motivation, and such an exercise would evince impermissible
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`hindsight.
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`Finally, Petitioner’s allegations regarding the understanding of a person of
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`ordinary skill in the art lack evidentiary support in the record. Petitioner’s
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`statements regarding the understanding of a person of ordinary skill in the art are
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`based on a “configurable parameter.” This configurable parameter is not described
`
`in the Kubala reference or any other reference. Petitioner and Mr. Williams cite to
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`no evidence in the record concerning this “configurable parameter.” The Board
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`should exclude the testimony regarding the “configurable parameter” from the
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`record.
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`These deficiencies are fatal to the Joinder Petition because Petitioner fails to
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`set forth any obviousness combination between any embodiments in Kubala with
`
`the background solution in Kubala. Accordingly, Petitioners fail to meet their
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`burden to “specify where each element of the claim is found in the prior art patents
`
`or printed publications relied upon” and to articulate a proper obviousness analysis
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`U.S. Patent No. 8,213,970
`based on specific portions of the evidence to support a finding of obviousness for
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`
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`the automatic acknowledgment limitation. 37 C.F.R. § 42.104(b)(4)-(5).
`
`IV. THE GENERAL PLASTIC FACTORS FAVOR DENIAL OF
`INSTITUTION
`
`A. The Joinder Petition Is A Serial Petition
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`Patent Owner asserted the ’970 patent against Apple, ZTE, and HTC on June
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`21, 2017 in the U.S. District for the Eastern District of Texas. Petitioners did not
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`file any petition challenging the ’970 patent within their statutory period and,
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`instead, delayed filing the Joinder Petition until after institution of the Google IPR.
`
`Petitioners concede that this Joinder Petition “is substantively the same as” the
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`Google IPR (Paper 3 at 1) and “challenge[s] the same claims of the ’970 patent on
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`the same grounds relying on the same prior art and evidence, including a
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`declaration identical in substance from the same expert.” Paper 4 at 1. Besides
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`joinder, which is currently unavailable, Petitioners provide no explanation for
`
`challenging the same patent claims on the same grounds and the same prior art
`
`presented in the Google IPR.
`
`B.
`
`The General Plastic Factors Favor Denial of This Joinder
`Petition
`
`In General Plastic, the Board identified seven nonexclusive factors bearing
`
`on “whether the Board should invoke its discretion to deny institution of an inter
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`partes review, based on a follow-on petition on the same patent, under 35 U.S.C.
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`IPR2019-00485
`U.S. Patent No. 8,213,970
`§ 314(a) and 37 C.F.R. § 42.108(a).” The Board has previously declined to
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`
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`institute follow-on petitions, even when the follow-on petition is filed by a party
`
`different than the party involved in the previous petitions. Netapp, Inc. v. Realtime
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`Data LLC, IPR2017-01195, Paper 9 at 10 (P.T.A.B. Oct. 12, 2017) (“[W]e find
`
`that the General Plastic factors provide a useful framework for analyzing the facts
`
`and circumstances present in this case, in which a different petitioner filed a
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`petition challenging a patent that had been challenged already by previous
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`petitions.”).
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`The seven General Plastic factors are:
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`1. Whether the same petitioner previously filed a petition directed to the
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`same claims of the same patent;
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`2. Whether at the time of filing of the first petition the petitioner knew of
`
`the prior art asserted in the second petition or should have known of it;
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`3. Whether at the time of filing of the second petition the petitioner
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`already received the patent owner’s preliminary response to the first petition or
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`received the Board’s decision on whether to institute review in the first petition;
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`4.
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`The length of time that elapsed between the time the petition