CASE IPR2019-01279
`Patent No. 8,510,407
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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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`LENOVO HOLDING COMPANY, INC.,
`LENOVO (UNITED STATES) INC., and
`MOTOROLA MOBILITY LLC,
`Petitioners,
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`v.
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`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
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`CASE IPR2019-01279
`Patent No. 8,510,407
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`PATENT OWNER DODOTS LICENSING SOLUTIONS, LLC’S
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`PATENT OWNER RESPONSE
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`Patent No. 8,510,407
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`LENOVO HOLDING COMPANY, INC.,
`LENOVO (UNITED STATES) INC., and
`MOTOROLA MOBILITY LLC,
`Petitioners,
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`v.
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`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
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`
`
`CASE IPR2019-01279
`Patent No. 8,510,407
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`PATENT OWNER DODOTS LICENSING SOLUTIONS, LLC’S
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`PATENT OWNER RESPONSE
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`1
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`CASE IPR2019-01279
`Patent No. 8,510,407
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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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`Background of the Technology………………………………………...…4
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`III. Claim Construction……………………………………………………….6
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`IV. The Independent Claims Are Not Obvious………………………………9
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`a. Ground 1 Does Not Invalid The Independent Claims………………10
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`b. Ground 3 Does Not Invalidate The Independent Claims…………...13
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`V.
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`The Dependent Claims Are Not Obvious…………………………….…14
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`VI. Secondary Considerations Further Undermine Petitioners’
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`Argument………………………………………………………………...15
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`VII. The Petition Relies On The Fiction That “Secret” Prior Art Was
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`Accessible ……………………………………………………………..16
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`VIII. Conclusion……………………………………………………………….17
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`TABLE OF AUTHORITIES
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`CASES
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`Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349 (Fed. Cir. 2014) --------------- 7
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`GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014); --------- 7
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`Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) ----------------- 7
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`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed Cir. 1983) ----------------------- 14
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`Truswall Sys. Corp. v. Hydro-Air Engineering, Inc., 813 F.2d 1207 (Fed. Cir. 1987) -- 14
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`Patent No. 8,510,407
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`EXHIBIT LIST
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`Exhibit No.
`2003
`2004
`2005
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`Description
`Declaration of Rakesh Ramde
`Declaration of Dr. Earl Sacerdoti
`Curriculum Vitae of Dr. Earl Sacerdoti
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`I.
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`Introduction
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`Petitioners’ arguments fail for many reasons, but the simplest one is that all the
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`claims require what the patent refers to as a “networked information monitor template”
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`(i.e., “NIM template”), which the patent distinguishes from an executable program. As
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`explained in detail below and the accompanying declaration of computer science expert
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`Dr. Earl Sacerdoti, NIM templates are data structures, they are not executable programs.
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`By contrast, the references relied upon by the Petitioners for this limitation all involve
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`downloading executable programs, and are precisely what was distinguished by the
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`inventors.
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`Petitioners’ arguments also fail for another simple reason: all the claims require
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`what the patent refers to as a “networked information monitor” (i.e., “NIM”). The
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`patent defines the NIM as a type of frame through which content is presented to the
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`user. Given that this frame is used to present content to a user, it is something that exists
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`on the user’s client computing device. Moreover, the patent makes clear that the frame
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`is instantiated on the user’s client computing device in a specific way; namely, by
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`utilizing the definitional information contained in the data structure that is the NIM
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`template. In the patented invention, the NIM template, not the NIM, is downloaded to
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`the user’s client computing device. To try to map the prior art to the NIM limitation,
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`Petitioners point to an executable program downloaded from the server, but the NIM is
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`not an executable program (it’s a frame). In addition, the patent explains that the NIM
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`is created on the user’s client computing device using the NIM template; the NIM is not
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`downloaded from the server.
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`A third simple reason that the Petitioners’ arguments fail is that the patent makes
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`clear that the NIM and the NIM template are not the same. Petitioners, however, point
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`to the same executable programs in their attempt to map the prior art onto these two
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`separate limitations. Even if an executable program could be a NIM (it can’t) and even
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`if an executable program could be a NIM template (it can’t), the same executable
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`program could not be both the NIM and NIM template.
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`It also is important to recognize as a threshold matter that both of the main
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`references relied upon by the Petitioners (Hoff and Razavi) were expressly considered
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`by the Patent Examiner during prosecution of the application that resulted in the ‘407
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`Patent. Each IDS disclosing these references has a sentence added and initialed by
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`Examiner Lin in which he initialed, that “All references considered except where lined
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`through.” Ex. 1002 at 63 (Hoff) and 64 (Razavi). Petitioners have presented no
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`evidence to suggest (let alone prove) that the Examiner was lying when he wrote that he
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`“considered” these references, and there is no basis for discounting this express
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`statement by Examiner Lin. Petitioner tries to minimize this critical fact by arguing that
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`the references were not “substantively applied or discussed during prosecution” (Pet. At
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`1), but the references only would have been “substantively applied or discussed” if
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`Examiner Lin concluded after his express consideration that the references invalidated
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`the claims. The fact that Examiner Lin did not reject the claims in light of these
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`references despite having expressly “considered” them strongly bolsters the validity of
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`claims, rather than undermining it.
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`The only art relied upon by the Petitioners that was not cited during prosecution
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`is relied upon by Petitioners only for other aspects of the claims, or is cumulative, and
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`would not have changed the outcome of the prosecution. Petitioners should not be
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`allowed to play Monday-morning quarterback on the decisions of the Patent Office, as
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`that would have a serious negative impact on our patent system. Such second-guessing
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`would be demoralizing to the hard-working Patent Examiners, men and women like
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`Examiner Lin who are skilled in technology areas in which they review applications.
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`Such second-guessing also would be demoralizing to inventors who not only
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`devote substantial time and energy to research and development, but then to the
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`business aspects that are necessary to bring new technologies into existence. Having
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`run the gauntlet in the Patent Office to demonstrate entitlement to a patent, patent
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`owners should have a reasonable degree of comfort that their property right has real
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`meaning. As Director Iancu states on the PTO’s home page:
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`“As we embark on the next wave of technological and industrial
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`revolutions, we must ensure that we continue to have a robust IP system,
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`with rights that are reliable, predictable, and meaningfully enforceable.
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`This is, in fact, more important now than ever.
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`- DIRECTOR ANDREI IANCU”
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`USPTO Website (https://www.uspto.gov/) (bold in original).
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`When the nature of NIM templates as “data structures” (not executable
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`programs) is properly considered, as well as the fact that NIMs are frames created on
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`the user’s client computing device (not downloaded from the server), it becomes clear
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`that the Petitioners are incorrect in their challenge to both independent claims of the
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`‘407 Patent (Claims 1 and 13). Secondary considerations – completely ignored by the
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`Petition – likewise support this conclusion. Similarly, because the independent claims
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`are valid, all the claims that depend from them likewise are valid, and Claims 8 and 20
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`are also valid for independent reasons as discussed below in Section V.
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`II.
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`Background of the Invention
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`Led by twin brothers John and George Kembel, the team of scientists who
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`invented the groundbreaking technology described in the ‘407 patent were true dot-com
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`pioneers. In 1999, more than nine years before the Apple app store opened, these
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`inventors conceived of a novel approach for creating an ecosystem of apps (which they
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`called “Dots”) that enabled the delivery of custom-tailored content from the internet not
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`only without using a web browser (the aspect focused on by the Petition) but without
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`the need for each Dot to be a standalone application (the aspect completely ignored by
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`the Petition). Among other things, this enabled fast downloads and easy sharing.
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`As explained in the accompanying declaration of Rakesh Ramde, the Kembel
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`brothers were able to build a highly successful company around the then-patent-pending
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`technology. The company, DoDots, Inc., built Dots for dozens of companies, including
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`ABC, Edmunds, CNET and many others. Among other recognitions, the company was
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`profiled in a highly favorable CNN article. At its peak, the company had a market
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`capitalization of a whopping $275 million.
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`Unfortunately for DoDots, Inc. and Mr. Ramde (who was counsel for DoDots,
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`Inc.), the industry-wide dot-com crash sank the company, allowing later entrants to
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`eclipse the trailblazing work done by the Kembel brothers and their team. DoDots, Inc.
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`was forced to wind down operations, and sold its patent portfolio, which remained
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`dormant for various reasons until recent years.
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`The two independent claims of the ‘407 patent (claims 1 and 13) cover
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`fundamental aspects of the invention, including utilizing what the inventors (acting as
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`their own lexicographers) called “networked information monitors (NIMs)” and “NIM
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`Templates.” The true brilliance of the invention of the ‘407 Patent can only be
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`understood by reading the specification and appreciating the special nature of NIM
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`templates, and how they are utilized to create NIMs. As explained in Dr. Sacerdoti’s
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`declaration, NIM templates are “data structures,” not applications. They exist in the
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`context of an ecosystem in which resources identified by the NIM templates are stitched
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`together by a “home NIM” to create the defined NIM (a frame) on the user’s client
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`computing device, rather than requiring each Dot (app) to be downloaded as an applet
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`or application. Thus, although one benefit of the patented technology (focused on by
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`the Petition) is to be able to access web content outside of a browser, the invention is
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`much more than that. It’s not just what the invention does, it’s how it does it. As the
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`inventors explained in the specification, their approach enabled this to be done without
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`the need for developing custom client applications. ‘407 Patent at 26:38-40 (“NIMs
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`allow a developer to provide an application feel without developing custom client
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`applications.”) (emphasis added).
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`The patent explains that “NIMs are extremely flexible, because the definition of
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`the NIM is content, rather than compiled code.” ‘407 Patent at 21:28-50. As explained
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`by Dr. Sacerdoti, “[b]ecause the NIM is constructed on the client from a definition, the
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`invention of the ‘407 patent avoids the need to download compiled applications or
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`applets.” Sacerdoti Decl., ¶ 16.
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`Rather than being downloaded as applications, NIMs are constructed by an
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`application (what the patent refers to as a “client parser application”) that is resident on
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`the client computing device and that uses the definition of the NIM stored in the NIM
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`template. Id., ¶ 20.
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`To use a food analogy, NIM templates are like recipes, whereas the prior art
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`method of downloading an applet or application is like receiving delivery of a fully
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`cooked meal.
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`III. Claim Construction
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`The Petition ignored the significance of the fact that the challenged claims utilize
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`two terms that do not have any ordinary and customary meaning: “networked
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`information monitor” (i.e., a “NIM”) and “networked information monitor template”)
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`(i.e., a “NIM template”). Instead, these terms were given special definitions by the
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`inventors. As such, they fall within the “lexicography” exception to the rule that claim
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`terms bear their ordinary and customary meaning. GE Lighting Solutions, LLC v.
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`AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014); see also Braintree Labs., Inc. v.
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`Novel Labs., Inc., 749 F.3d 1349, 1356 (Fed. Cir. 2014) (“Under our precedent, the
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`patentee’s lexicography must govern the claim construction analysis.”). Where, as here,
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`the patent’s specification “clearly set[s] forth a definition of [a] disputed claim term
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`other than its plain and ordinary meaning” and “clearly express[es] an intent to redefine
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`the term,” then that definition prevails. Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367,
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`1371 (Fed. Cir. 2014).
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`As explained in detail in the accompanying declaration of Dr. Earl Sacerdoti,
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`“Networked Information Monitor” is a distinct term from “Networked Information
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`Monitor Template.” Sacerdoti Decl. (Ex. 2004), ¶¶ 22-60. Thus, any interpretation of
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`prior art which conflates these two terms as the Petition and Dr. Madisetti do is
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`inherently incorrect. Id.
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`The ’407 patent carefully distinguishes between the NIM and a template or
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`definition of the NIM. The inventors defined NIMs in the specification as follows: “As
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`used herein, the term networked information monitor or NIM refers to a fully
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`configurable frame with one or more controls; the frame through which content is
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`optionally presented.” ‘407 Patent at 5:21-24.
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`By contrast, the NIM template is a data structure that defines the NIM; it is not
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`the NIM and it is not an executable program (i.e., compiled code). Id., ¶¶ 20-36.
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`“NIMs are extremely flexible, because the definition of the NIM is content, rather
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`than compiled code.” ‘407 Patent at 21:48-50 (emphasis added); id. at 6:65-7:2 (“NIM
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`templates database 74 includes a large number of NIM templates. Each NIM template
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`defines the characteristics of a specific NIM, including fully configurable frame
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`characteristics, view and control characteristics, and NIM content references.”)
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`(emphasis added); id. at 3:63-65 (“FIG. 13 illustrates a data structure for a NIM
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`definition, stored in the NIM application server's template database or user profile
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`database”) (emphasis added).
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`Although the term “NIM template” requires construction, the term “template”
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`has a plain and ordinary meaning that bolsters the view that the NIM template is a data
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`structure not an executable program. Dr. Sacerdoti has gathered in his declaration
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`numerous sources that show how “template” is used in the computer science context.
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`Sacerdoti Decl., ¶¶ 29-36.
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`NIM templates are significantly smaller than the NIMs they define. Sacerdoti
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`Decl., ¶ 45. “Each NIM definition contains just enough information to define and
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`initialize the NIM's components (NIM frame, controls, etc.). For example, this
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`information may contain data to configure the skeleton or frame that is filled in by NIM
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`content from a developer's server. The NIM definition is therefore fairly small in size
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`(~2K), and is therefore easily distributable as an XML file or Blob (binary large object),
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`which is communicated using the same mechanisms (HTTP/ HTTPS requests) as
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`regular Web pages.” ‘407 Patent at 33:55-65.
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`The specification is clear that a NIM template is not simply compiled code.
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`Hence, a NIM template cannot be an executable application or applet, and an executable
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`application or applet cannot be a NIM template. Sacerdoti Decl., ¶ 46.
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`As explained by Dr. Sacerdoti, the specification discloses multiple advantages of
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`employing a NIM template data structure that defines a NIM, rather than utilizing NIMs
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`by themselves. Id., ¶¶ 47-53. None of these advantages would be realized if the NIM
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`and the NIM template were the same.
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`In light of the meaning ascribed to the term “NIM template” in the ‘407 Patent,
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`“Networked Information Monitor template” (a.k.a., “NIM template”) is properly
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`construed to mean “A data structure that defines the characteristics of a specific
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`networked information monitor.” Id., ¶ 57.
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`IV. The Independent Claims Are Not Obvious
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`Petitioners’ arguments suffer from common flaws. At a high level, Petitioners
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`confuse the outcome with the process. The fact that the outcome in the Petitioners’
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`references may result in something similar to the outcome of the patented system and
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`method of the ‘407 patent (e.g., displaying web content outside of a browser) does not
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`mean that those references render the patented system and method obvious.
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`At its heart, the patented system and method revolve around the use of NIM
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`templates (data structures) that are downloaded to the user’s client computing device
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`before being used to construct NIMs (frames for displaying content). Petitioners have
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`not pointed to anything that operates in a similar manner.
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`a. Ground 1 Does Not Invalid The Independent Claims
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`Ground 1 relies primarily on the Hoff patent, which Petitioners seek to combine
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`with one or more of Berg, Nazem or Admitted Prior Art. The invention of Hoff
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`“consists of a system and method for the large-scale distribution of application code and
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`data. The system consists of a client-side component, which the user uses to download
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`applications, as well as a server-side component, which is used by a content provider or
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`developer to make applications available for distribution. The system allows for the
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`automatic updating, personalization, and usage monitoring of applications. In addition,
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`it is possible to use the application even when the host computer is not always
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`connected to the network.” Hoff (Ex. 1004) at 2:43-53 (emphasis added).
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`According to the Petition, both Hoff and Berg describe Marimba Inc.’s Castanet
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`system, which “permitted content providers to create standalone software applications –
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`referred to as ‘channels’ – which clients could download from a server. Each
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`application could generate a fully configurable GUI defined by that application.” Pet. at
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`18-19 (emphasis added).
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`As explained above, an application cannot be a NIM template. The prior art
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`method of downloading executable programs (e.g., applications and applets) is
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`specifically the approach that the ‘407 patent inventors distinguished from their patented
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`method of merely downloading a data structure. Indeed, the ‘407 patent inventors
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`identified Castanet and Hoff during prosecution, and Examiner Lin considered them in
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`allowing the claims.
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`The Petition does not identify any entity distinct from the executable
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`program as the NIM template, asserting instead that the “channel” application
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`disclosed in Hoff and Berg (what the Petition also wrongly points to as the NIM)
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`somehow contains the claimed NIM template data structure. Sacerdoti Decl., ¶¶
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`48 -51. This is like saying that a meal inherently contains its own recipe, which would
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`be a nonsensical assertion.
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`In addition, Petitioner does not actually point to any data structure contained in
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`the channel application, rather they focus on the outcome of running that program and
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`suggest without basis that the outcome must have been achieved through the same
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`process disclosed in the ‘407 patent.
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`Combining Hoff with Berg doesn’t help Petitioners. The Berg article does not
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`describe anything novel and merely purports to illustrate the capabilities of the Castanet
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`system created by Hoff (which was considered by Examiner Lin). Berg (Exhibit 1009
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`at 1 (“I’ll examine how to create a signed Castanet channel for distributing signed and
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`trustworthy content to users.) (emphasis added); id. at 3 (“My demonstration program
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`is a Castanet channel….”) (emphasis added). There is nothing in Berg that is not
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`already disclosed in Hoff and inherent in Java. Java is prior art disclosed and discussed
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`in much of the other prior art of record as well as in the specification of the ‘407 Patent
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`itself. See, e.g., Hoff (Ex. 1004) at 1:38-2:4; ‘407 Patent at 23:61 and 30:54. Thus, Berg
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`is merely cumulative of the art of record.
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`Like Hoff, Berg concerns itself with applets and applications. See, e.g., Berg
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`(Exhibit 1009 at 2 (“Using [Castanet] … you can now create full-featured client
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`applications ….”). This is in sharp contrast to the invention of the ‘407 Patent, which
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`involves the download of comparatively tiny NIM templates (data structures) rather
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`than applets or applications.
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`The Petition does not identify what in Berg might be a NIM template distinct
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`from the NIM. Sacerdoti Decl., ¶ 72. Instead, the Petitioner points to a “java
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`application” (Pet. at 19) that the Petitioners argue is both the NIM and NIM template.
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`Compare Pet. at 22 (pointing to storage of the “channel” as storage of the “NIM
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`template”) with Pet. at 25 (pointing to the “channel” as the “NIM”).
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`Petitioners are wrong on both fronts. As explained above, an executable
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`program cannot be a NIM and it cannot be a NIM template. Moreover, NIMs and NIM
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`templates are distinct items. The definition of a thing is different from the thing itself.
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`Sacerdoti Decl., ¶¶ 43-44.
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`As Dr. Sacerdoti concludes: “Thus, in my opinion, the petition fails to
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`indicate how Hoff in view of Berg could teach any of Claims 1, 9-13 and 21-24 of
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`the ’407 patent.” Id., ¶ 81.
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`The Petition uses the Nazem patent and the “Admitted Prior Art” merely for
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`the “time-varying content” limitation (Pet. at 19, 23-24, 26-28) not for the NIM
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`and NIM template limitations, and thus these references are of no benefit to
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`Petitioners as to the key issues in dispute.
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`b. Ground 3 Does Not Invalidate The Independent Claims
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`“Ground 3 is based on the combination of Razavi and Anderson, which teach it
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`was well known to access Java applets through a web browser.” Pet. at 19. As the
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`Petition explains, these Java applets were “software applications.” Id.
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`The Java applets (executable programs) disclosed in Razavi and Anderson fail to
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`satisfy the NIM and NIM template limitations for the same reasons as discussed above
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`regarding the executable programs of Hoff and Berg. Sacerdoti Decl., ¶¶ 82-91.
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`Moreover, as Dr. Sacerdoti explains, Petitioners are incorrect in their argument
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`that one of ordinary skill in the art would have been motivated to combine these two
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`references:
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`Razavi addresses modifying applets to enable them to be detached from a
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`browser. Anderson describes a method for a Java applet to access a database
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`management system by preparing a url that embeds a database query within it,
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`accessing a server via that url, reading the results returned by the server upon
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`processing that url, and displaying them within a web browser. One of skill in
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`the art would not be motivated to combine a solution to detach applets from a
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`browser with one that provided database queries within a browser.
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`Id., ¶ 92.
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`Accordingly, Razavi/Anderson does not render obvious Claims 1 and 13.
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`V.
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`The Dependent Claims Are Not Obvious
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`Because Petitioners have failed to prove that the independent claims are obvious,
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`none of the dependent claims can be considered obvious. Moreover, Petitioners’
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`arguments under Grounds 2 and 4 as to dependent claims 8 and 20 fail for yet another
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`reason. Petitioners rely on the Fortin reference with respect to the limitation added by
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`Claims 8 and 20. Petitioners describe Fortin as disclosing “a Java application and an
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`associated markup language file.” Pet. at 13. But Petitioners present no evidence that
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`having a markup language file associated with an application is the same as having a
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`markup language file included in a data structure (NIM template). Sacerdoti Decl., ¶¶
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`96-97.
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`
`
`VI. Secondary Considerations Further Undermine Petitioners’ Argument
`
`As the Federal Circuit has explained, “secondary” considerations of non-
`
`obviousness, such as commercial success, come secondary in time in the analysis but
`
`often are primary in importance to the outcome. See Truswall Sys. Corp. v. Hydro-Air
`
`Engineering, Inc., 813 F.2d 1207, 1212 (Fed. Cir. 1987) (“That evidence [of purported
`
`commercial success] is ‘secondary’ in time does not mean that it is secondary in
`
`importance.”); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed Cir. 1983)
`
`(secondary considerations “may often be the most probative and cogent evidence in the
`
`record”).
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`Here, the validity of the independent claims is further supported by the secondary
`
`considerations of non-obviousness, including commercial success. As described in the
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`accompanying declaration of Rakesh Ramde, the inventors were able to obtain a large
`
`list of high-profile customers for their then-patent-pending technology, and the business
`
`they created to commercialize the technology had an extraordinary valuation of $275
`
`million at its peak. Ramde Declaration (Exhibit 2003), ¶ 2-3, 8. The company’s
`
`
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`15
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`CASE IPR2019-01279
`Patent No. 8,510,407
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`success was directly related to this technology, as the primary product/service of the
`
`company was the DoDots platform described in the specification of the ‘407 Patent. Id.,
`
`¶ 5.
`
`The company also received contemporaneous praise and recognition, including
`
`being profiled in a CNN article. Id., ¶ 4.
`
`Petitioners do not mention this commercial success, even though they were well
`
`aware of it from Patent Owner’s Complaint and from other sources. Nor do Petitioners
`
`submit evidence of contemporaneous and independent invention by others, even though
`
`they have the burden of proof.
`
`VII. The Petition Relies On The Fiction That “Secret” Prior Art Was
`
`Accessible
`
`The main prior art references relied upon by Petitioners – Hoff (Ex. 1004) and
`
`Razavi (Ex. 1006) -- are patents that each were published only after the critical date for
`
`the ‘407 Patent (April 26, 1999), as those patents were issued on July 6, 1999 and June
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`4, 2002, respectively. The same is true of the patents to Nazem (Ex. 1007) and
`
`Anderson (Ex. 1012), and the Fortin patent application (Ex. 1008), which were not
`
`available to the public until November 9, 1999, December 7, 1999 and February 21,
`
`2002, respectively.
`
`Although under current Federal Circuit precedent these references are considered
`
`
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`16
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`CASE IPR2019-01279
`Patent No. 8,510,407
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`prior art despite not being publicly accessible as of the critical date, DoDots contends
`
`that the law should be changed, as something that was not accessible to one of ordinary
`
`skill in the art as of the critical date could not have rendered the invention obvious as of
`
`that date to one of ordinary skill in the art. DoDots believes that “secret” prior art has an
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`appropriate role in an anticipation inquiry, where the issue is novelty (which has a
`
`different standard), but not in an obviousness inquiry, and that the same “public
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`accessibility” standard applicable to printed publications should apply to patents and
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`patent applications. In any event, if these “secret” references were found to render the
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`challenged claims invalid, the damage to the patent system would be further
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`exacerbated by the fiction that these references were somehow accessible as of the
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`critical date.
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`
`
`VIII. Conclusion
`
`Failing to consider the pivotal distinctions between NIMs (frames) and NIM
`
`templates (data structures used to construct the frames), between NIMs (which are not
`
`executable programs) and applications (which are executable programs), and between
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`NIM templates (which are not executable programs) and applications (which are
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`executable programs), Petitioners’ arguments miss the mark. Relying primarily on art
`
`already expressly considered by the Examiner and presumably deemed by the Examiner
`
`to be inapposite, and ignoring secondary considerations of non-obviousness, Petitioners
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`17
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`CASE IPR2019-01279
`Patent No. 8,510,407
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`have failed to meet their burden of proof. Under the circumstances of this case,
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`invalidating the challenged claims would harm not only the Patent Owner but the patent
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`system itself. Because Petitioners cannot meet their burden of proof, the challenged
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`claims of the ‘407 Patent should be confirmed.
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`Dated: April 27, 2020
`
`Respectfully submitted,
`
`By: /s/ Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`Reg. No. 51,185
`(Special Counsel to Progress LLP)
`Hudnell Law Group P.C.
`800 W. El Camino Real
`Suite 180
`Mountain View, CA 94040
`T: 650-564-7720
`F: 347-772-3034
`lewis@hudnelllaw.com
`
`Lead Counsel for Patent Owner
`
`Perry Goldberg (pro hac vice)
`Progress LLP
`11620 Wilshire Blvd., Suite 900
`Los Angeles, CA 90025
`T: 310-697-7201
`goldberg@progressllp.com
`
`Back-up Counsel for Patent Owner
`
`
`
`
`
`
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`18
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`CASE IPR2019-01279
`Patent No. 8,510,407
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`CERTIFICATE OF SERVICE
`I certify that the foregoing PATENT OWNER DODOTS LICENSING
`
`
`
`SOLUTIONS, LLC’S PATENT OWNER RESPONSE was served on April 27,
`
`2020 on the Petitioner by filing this document through the Patent Trial and Appeal
`
`Board End to End System as well as e-mailing a copy to
`
`jalemanni@kilpatricktownsend.com, smoore@kilpatricktownsend.com,
`
`taludlam@kilpatricktownsend.com, and MMeyer@kilpatricktownsend.com.
`
`By: /s/ Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`Reg. No. 51,185
`(Special Counsel to Progress LLP)
`
`Hudnell Law Group P.C.
`800 W. El Camino Real
`Suite 180
`Mountain View, CA 94040
`T; 650-564-7720
`F: 347-772-3034
`lewis@hudnelllaw.com
`
`
`
`19
`
`
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`CASE IPR2019-01279
`Patent No. 8,510,407
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`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
`LIMITATION, TYPEFACE REQUIREMENTS, AND TYPE STYLE
`REQUIREMENTS
`
`1.
`
` This Patent Owner Response complies with the type-volume
`
`limitation of 14,000 words, comprising fewer than 5,000 words, excluding the
`
`parts exempted by 37 C.F.R. § 42.24.
`
`2.
`
`This Patent Owner Response complies with the general format
`
`requirements of 37 C.F.R. § 42.6(a) and has been prepared using Microsoft® Word
`
`for Mac Version 16.32 in 14 point Times New Roman.
`
`By: /s/ Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`Reg. No. 51,185
`(Special Counsel to Progress LLP)
`
`Hudnell Law Group P.C.
`800 W. El Camino Real
`Suite 180
`Mountain View, CA 94040
`T; 650-564-7720
`F: 347-772-3034
`lewis@hudnelllaw.com
`
`
`
`20
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