UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`WISTARIA TRADING LTD.,
`Patent Owner
`
`
`
`
`IPR2019-01447
`PATENT 9,104,842
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`WISTARIA TRADING LTD.,
`Patent Owner
`
`
`
`
`IPR2019-01447
`PATENT 9,104,842
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`IPR2019-01147
`U.S. Patent 9,104,842
`
`
`I.
`II.
`
`1
`INTRODUCTION
`1
`THE ’842 PATENT
`1
`A. Overview of the ’842 Patent
`2
`B.
`Person of Ordinary Skill in the Art
` 2
`
`
`
`
`C.
`Claim Construction
`
`
`
`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER HAS
`FAILED TO MEET ITS BURDEN
`IV. CONCLUSION
`
`
`
`3
`17
`
`ii
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`
`Table of Authorities
`
`Cases
`
`In re NuVasive, Inc., 841 F.3d 966 (Fed. Cir. 2016) ................................................. 3
`
`Statutes
`
`35 U.S.C. § 103 .......................................................................................................... 3
`
`35 U.S.C. § 316(e) ..................................................................................................... 3
`
`
`
`iii
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`
`Table of Exhibits
`
`1002
`1003
`1004
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`Exhibit Description
`1001
`United States Patent No. 9,104,842 by Scott A. Moskowitz, entitled
`“Data Protection Method and Device”
`Declaration of Dr. Vijay K. Madisetti
`Curriculum Vitae of Dr. Vijay K. Madisetti
`File History for United States Patent No. 9,104,842
`File History for Ex Parte Reexamination of United States Patent No.
`9,104,842
`File History for United States Patent No. 6,598,162
`First Amended Complaint for Patent Infringement, Blue Spike LLC v.
`DISH Network Corporation, Civil Action No. 1:19-cv-00160-LPS-
`CJB (filed Mar. 29, 2019) (“District Court Litigation”)
`First Amended Complaint, Blue Spike LLC v. DISH Network
`Corporation et al., Nos. 6:18-CV-00333-RWS-KNM (E.D. Tex.),
`1:18-CV-01512-LPS-CJB (D. Del.) (the “Prior Litigation”)
`Order Granting Joint Motion to Transfer to the District of Delaware
`and Stay All Deadlines, 6:18-CV-00333-RWS-KNM, ECF No. 19,
`entered in Prior District Court Litigation
`Notice of Voluntary Dismissal Without Prejudice, served in Prior
`District Court Litigation
`United States Patent No. 5,199,066 to Logan (“Logan”)
`United States Patent No. 5,103,476 to Waite et al. (“Waite”)
`United States Patent No. 5,757,907 to Cooper et al. “(Cooper”)
`
`
`1010
`
`1011
`1012
`1013
`
`iv
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`
`I.
`
`INTRODUCTION
`
`Patent Owner Wistaria Trading Ltd. submits this Preliminary Response to
`
`the Petition for Inter Partes Review of United States Patent No. 9,104,842 (“the
`
`’842 Patent”) filed by Petitioner DISH Network L.L.C. (“Petitioner”) (the
`
`“Petition” or “Pet.”).
`
`The Board should dismiss the Petition in its entirety at least because, as
`
`Patent Owner shows below, dispositive claim elements are entirely missing from
`
`the combination of references asserted in each of the Grounds of the Petition.
`
`II. THE ’842 PATENT
`
`
`A. Overview of the ’842 Patent
`
`The ’842 Patent is titled “DATA PROTECTION METHOD AND
`
`DEVICE.” The ʼ842 Patent describes a method for data protection. EX1001,
`
`Abstract. In particular, a computer receives software and embeds a watermark in
`
`the software. EX1001, 16:3-5. The watermark encodes a license code. EX1001,
`
`16:6-7. The software (i.e., the license code encoded watermarked software)
`
`queries a user for personalization information during installation. EX1001, 16:8-
`
`10.
`
`
`
`1
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`
`B.
`
`Person of Ordinary Skill in the Art
`
`Petitioner submits that a person of ordinary skill in the art (“POSA”) would
`
`have at least a Bachelor of Science in Computer Science, and at least one to two
`
`years of experience related to secure distribution of digitized information or a
`
`related technology field, such as data integrity and security. See Petition, page 18.
`
`For the purposes of determining whether to institute the Petition, Patent Owner
`
`does not dispute Petitioner’s characterization of the level of ordinary skill in the
`
`art, as it is not dispositive.
`
`C. Claim Construction
`
`i.
`
`“watermark”
`
`To the extent that “watermark” is not expressly defined in the ’842 Patent,
`
`
`
`Patent Owner submits that the term “watermark” should be interpreted under its
`
`plain and ordinary meaning.
`
`ii.
`
`“personalization information”
`
`To the extent that “personalization information” is not expressly defined in
`
`the ’842 Patent, Patent Owner submits that the term “personalization information”
`
`should be interpreted under its plain and ordinary meaning.
`
`iii.
`
`“license code”
`
`
`2
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`To the extent that “license code” is not expressly defined in the ’842 Patent,
`
`Patent Owner submits that the term “license code” should be interpreted under its
`
`plain and ordinary meaning.
`
`iv.
`
`“license key”
`
`To the extent that “license key” is not expressly defined in the ’842 Patent,
`
`Patent Owner submits that the term “license key” should be interpreted under its
`
`plain and ordinary meaning.
`
`v.
`
`“encoded first code resource”
`
`To the extent that “encoded first code resource” is not expressly defined in
`
`the ’842 Patent, Patent Owner submits that the term “encoded first code resource”
`
`should be interpreted under its plain and ordinary meaning.
`
`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO MEET ITS BURDEN
`
`
`
`Petitioner has the burden to show that the challenged claims are
`
`unpatentable. 35 U.S.C. § 316(e). When a Petitioner argues that a claim is
`
`unpatentable as obvious under 35 U.S.C. § 103, the Petitioner must show that each
`
`and every element of the challenged claims is rendered obvious by the combination
`
`of Petitioner’s cited art. The Board may not craft new grounds of unpatentability
`
`not advanced by the petitioner. In re NuVasive, Inc., 841 F.3d 966, 971-72 (Fed.
`
`Cir. 2016).
`
`3
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`Petitioner challenges claim 1 of the ’842 Patent as being anticipated by
`
`United States Patent No. 5,199,066 (“Logan”). See Petition, page 22. Petitioner
`
`also challenges claim 1 of the ’842 Patent as being obvious over Logan. See
`
`Petition, page 31. Petitioner further challenges claims 11 and 13 of the ’842 Patent
`
`as being obvious over United States Patent No. 5,103,476 (“Waite”) in view of
`
`United States Patent No. 5,757,907 (“Cooper”). See Petition, page 34. Petitioner
`
`has failed to meet its burden to demonstrate that the challenged claims are obvious
`
`under 35 U.S.C. § 103.
`
`A. Petitioner has failed to show that a reasonable likelihood exists that
`claim 1 is anticipated by Logan
`
`Patent Owner respectfully submits that an inter partes review of the ’842
`
`Patent should not be instituted because Logan fails to disclose or suggest each and
`
`every element of independent claim 1 of the ’842 Patent. Therefore, there is no
`
`likelihood that independent claim 1 of the ’842 Patent is anticipated by Logan.
`
`Claim 1 of the ’842 Patent recites (emphasis added for missing element):
`
`A computer-based method for modifying software, comprising:
`receiving, in a computer having a processor and memory, software, wherein
`said software provides a specified functionality;
`embedding a watermark into said software, using said computer, said
`watermark encoding at least one first license code, thereby resulting
`in a first license code encoded watermarked software; and
`
`4
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`wherein said first license code encoded watermarked software is configured
`to query a user for personalization information during its installation.
`
`
`Logan fails to disclose or suggest embedding a watermark into software using the
`
`computer that receives said software, as in claim 1.
`
`Logan describes a personal computer 10 that includes a keyboard 12, a
`
`screen 14, and two disk drives 16. EX1011, 3:33-38. A diagram of the personal
`
`computer 10 is illustrated below.
`
`
`
`“The disk drives 16 are employed in a manner well known in the computer art for
`
`receiving one or more floppy disks [18] to facilitate the loading or entry of
`
`computer software or programs stored within [the] floppy disk[s] [18] into the
`
`computer 10.” EX1011, 3:45-50. Thus, the computer 10 receives the floppy disks
`
`18, which includes computer software. EX1011, 3:45-50.
`
`
`
`An original copy of the computer software (included in the floppy disks 18)
`
`has a first software code (e.g., a serial number). EX1011, 4:19-31. “Associated
`
`5
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`with each original copy of the software is a second software code which is
`
`stored within the software at a hidden location.” EX1011, 4:32-34 (emphasis
`
`added). Thus, the original copy of the computer software also includes a second
`
`software code that is stored within the computer software (e.g., stored in the
`
`floppy disks 18). EX1011, 4:32-34 (emphasis added).
`
`If a user wishes to use the computer software, the computer software
`
`requests that the user input the first software code (e.g., the serial number) and a
`
`serial number of the computer 10. EX1011, 4:65-5:11. The computer software
`
`performs a first predetermined operation on the first software code and the serial
`
`number of the computer 10 to produce a first intermediate code. EX1011, 5:22-25.
`
`The computer 10 requests that the user input an activation code from a supplier of
`
`the computer software. EX1011, 5:40-41. The computer software performs a
`
`second predetermined operation on the first intermediate code and the activation
`
`code to produce a second intermediate code. EX1011, 5:53-55. The computer
`
`software compares the second software code to the second intermediate code and,
`
`if the two codes are identical, the user is permitted to use the computer software.
`
`EX1011, 5:68-6:8.
`
`Petitioner’s position is that the “second software code” in Logan
`
`corresponds to the “watermark” in claim 1 of the’842 Patent. See Petition, page
`
`25. However, Logan fails to disclose that the computer 10 embeds the second
`
`6
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`software code in the computer software. Rather, in Logan, the original copy of the
`
`software includes a second software code which is stored within the software at
`
`a hidden location. EX1011, 4:32-34 (emphasis added). Thus, because the original
`
`copy of the software has the second software code, the second software code is
`
`included in the computer software prior to the computer 10 receiving the
`
`computer software. Thus, it is impossible for the computer 10 to embed the
`
`second software code in the computer software because the second software code
`
`comes pre-inserted into the computer software. Therefore, Logan fails to disclose
`
`or suggest embedding a watermark into software using the computer that receives
`
`said software, as in claim 1. This element is completely missing.
`
`Petitioner failed to point to any portion of Logan as disclosing or suggesting
`
`embedding a watermark into software using the computer that receives said
`
`software, as in claim 1. Petitioner has therefore failed to meet its burden to
`
`demonstrate that claim 1 of the ’842 Patent is anticipated by Logan. Based on the
`
`above analysis, there is no likelihood that the claim 1 of the ’842 Patent is
`
`anticipated by Logan. Therefore, the Board should deny the Petition.
`
`B. Petitioner has failed to show that a reasonable likelihood exists that
`claim 1 is obvious over Logan
`
`As described above, Logan fails to disclose or suggest embedding a
`
`watermark into software using the computer that receives said software, as in claim
`
`1. This element is completely missing.
`
`7
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`Petitioner failed to point to any portion of Logan as disclosing or suggesting
`
`embedding a watermark into software using the computer that receives said
`
`software, as in claim 1. Petitioner has therefore failed to meet its burden to
`
`demonstrate a prima facie case of obviousness for independent claim 1. Therefore,
`
`the Board should deny the Petition.
`
`C. Petitioner has failed to show that a reasonable likelihood exists that
`claims 11 and 13 are obvious over Waite in view of Cooper
`
`Patent Owner respectfully submits that an inter partes review of the ’842
`
`Patent should not be instituted because Waite and Cooper, individually or in
`
`combination, fail to disclose or suggest each and every element of independent
`
`claim 11 of the ’842 Patent. Therefore, there is no likelihood that independent
`
`claim 11 of the ’842 Patent is obvious over Waite in view of Cooper. Claim 11 of
`
`the ’842 Patent recites (emphasis added for missing element):
`
`A method for licensed software use, the method comprising:
`loading a software product on a computer, said computer comprising a
`processor, memory, an input, and an output, so that said computer is
`programmed to execute said software product;
`said software product outputting a prompt for input of license information;
`and
`said software product using license information entered via said input in
`response to said prompt in a routine designed to decode a first
`license code encoded in said software product.
`
`8
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`
`
`Waite and Cooper, individually or in combination, fail to disclose or suggest
`
`said software product using license information entered via said input in response
`
`to said prompt in a routine designed to decode a first license code encoded in said
`
`software product, as in claim 11.
`
`Waite describes distributing an inactive version of a software program 16 to
`
`a user (i.e., a potential licensee) for loading on a personal computer 10. EX1012,
`
`1:53-56. The inactive version of the software program 16 includes all of the
`
`segments of a particular program code except for a critical segment 36 of an
`
`operations control loop, without which the software program 16 is incapable of
`
`sustained operation. EX1012, 1:60-63. Along with the inactive version of the
`
`software program 16, a registration shell program 11 is also distributed to the user.
`
`EX1012, 2:41-43. To register the software program 16 with the user for use, a
`
`registration process includes utilizing the registration shell program 11 with the
`
`personal computer 10 and utilizing a registration program 40 with a registration
`
`computer 12. EX1012, 2:46-50. A diagram of the registration process is
`
`illustrated below.
`
`9
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`
`
`
`The registration shell program 11 is executed when the user first attempts to
`
`execute the software program 16 (i.e., the “main program files”). EX1012, 2:66-
`
`3:1. Upon execution, the registration shell program 11 provides a data entry form
`
`prompting the user to enter identification information (i.e., a billing address, an
`
`account number, etc.) into a registration request file 25. EX1012, 3:9-15. The
`
`registration request file 25 is transmitted to the registration computer 12. EX1012,
`
`3:24-28. The registration computer 12 builds a tamer proof overlay file 37 by
`
`merging the identification information (in the registration request file 25) with the
`
`critical segment program instructions 36. EX1012, 3:43-46.
`
`“A cyclic redundancy check (CRC) value is computed which is unique to the
`
`merged data and program files and included within the tamperproof overlay file
`
`37.” EX1012, 3:46-49. The tamperproof overlay file 37 is encrypted and
`
`10
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`transmitted (with a corresponding decryption key) to the personal computer 10 as a
`
`single shipping file 38. EX1012, 3:49-60. Upon receipt, the personal computer 10
`
`opens the single shipping file 38 and installs the tamperproof overlay file 37,
`
`including the critical program segment 24. EX1012, 3:65-4:2.
`
`Petitioner asserts that the CRC value corresponds to the “license code”
`
`recited in claim 11 of the ’842 Patent. See Petition, page 41. Patent Owner
`
`respectfully submits that the CRC value 22 is not encoded in the software
`
`program 16 (e.g., the main program files) that is loaded into the personal
`
`computer 10. Rather, the CRC value 22 is received separately in the single
`
`shipping file 38 after the software program 16 is loaded into the personal computer
`
`10. EX1012, 3:46-60. Waite fails to disclose or suggest that the CRC value 22 is
`
`encoded in the software program 16 initially loaded into the personal computer 10.
`
`This element is completely missing from Waite. Therefore, Waite fails to disclose
`
`or suggest said software product using license information entered via said input in
`
`response to said prompt in a routine designed to decode a first license code
`
`encoded in said software product, as in claim 11.
`
`Cooper describes a real key 421 that “is utilized to decrypt encrypted
`
`software products on [a] distributed memory media.” EX1013, 16:24-26. For
`
`example, encrypted validation text 423 and the real key 421 are provided to a
`
`decryption engine 425, as shown below in FIG. 21 of Cooper. EX1013, 16:27-31.
`
`11
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`
`
`
`The decryption engine 425 uses the real key 421 to decrypt the encrypted
`
`validation text 423 and output clear validation text 427. EX1013, 16:31-32. The
`
`clear validation text 427 is compared with known clear validation text 431.
`
`EX1013, 16:36-38. If the clear validation text 427 matches the known clear
`
`validation text 431, a software object is decrypted. EX1013, 16:38-40.
`
`
`
`Petitioner asserts that a Person of Skill in the Art (POSITA) “would have
`
`been motivated to use the real key generation method of Cooper with the
`
`tamperproof overlay file of Waite.” See Petition, page 48. In particular, Petitioner
`
`asserts that “a POSITA would have been motivated to replace the decrypt key of
`
`Waite with the real key generator that creates a real key (i.e., decryption key) in
`
`response to the user entering the product key, customer number, and machine ID as
`
`taught by Cooper in order to decrypt the tamperproof overlay file of Waite for
`
`several reasons.” See Petition, page 48 (emphasis added).
`
`12
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`Petitioner’s combination fails to disclose or suggest the above-described
`
`
`
`feature of claim 11. The tamperproof overlay file 37 in Waite is encrypted and
`
`transmitted (with a corresponding decryption key) to the personal computer 10 as a
`
`single shipping file 38. EX1012, 3:49-60. Upon receipt, the personal computer 10
`
`opens the single shipping file 38 and installs the tamperproof overlay file 37,
`
`including the critical program segment 24. EX1012, 3:65-4:2. Thus, the
`
`tamperproof overlay file 37 is not encoded in the software program 16 initially
`
`loaded into the personal computer 10. Modifying Waite in view of Cooper would
`
`not change this fact. Modifying Waite in view of Cooper merely changes how the
`
`tamperproof overlay file 37 is decoded (i.e., using a real key 421 of Cooper).
`
`Therefore, Waite and Cooper, individually or in combination, fail to disclose
`
`or suggest said software product using license information entered via said input in
`
`response to said prompt in a routine designed to decode a first license code
`
`encoded in said software product, as recited by claim 11. Petitioner has therefore
`
`failed to meet its burden to demonstrate a prima facie case of obviousness for
`
`independent claim 11. Based on the above analysis, there is no likelihood that the
`
`claim 11 of the ’842 Patent is obvious over Waite in view of Cooper. Therefore,
`
`the Board should deny the Petition.
`
`Patent Owner respectfully submits that an inter partes review of the ’842
`
`Patent should not be instituted because Waite and Cooper, individually or in
`
`13
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`combination, fail to disclose or suggest each and every element of independent
`
`claim 13 of the ’842 Patent. Therefore, there is no likelihood that independent
`
`claim 13 of the ’842 Patent is obvious over Waite in view of Cooper. Claim 13 of
`
`the ’842 Patent recites:
`
`A method for encoding software code using a computer having a processor
`and a memory, comprising:
`storing a software code in said memory;
`wherein said software code comprises a first code resource and provides a
`specified underlying functionality when installed on a computer
`system; and
`modifying, by said computer, using a first license key and an encoding
`algorithm, said software code, to form a modified software code; and
`wherein said modifying comprises encoding said first code resource to form
`an encoded first code resource;
`wherein said modified software code comprises said encoded first code
`resource, and a decode resource for decoding said encoded first code
`resource;
`wherein said decode resource is configured to decode said encoded first
`code resource upon receipt of said first license key.
`
`
`Waite and Cooper, individually or in combination, fail to disclose or suggest
`
`that said decode resource is configured to decode said encoded first code resource
`
`(included in the software) upon receipt of said first license key, as in claim 13.
`
`14
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`Petitioner asserts that “Waite’s tamperproof overlay file is a modified
`
`software code that comprises an encoded first code resource.” See Petition, page
`
`61. Thus, Petitioner asserts that the tamperproof overlay file 37 corresponds to the
`
`“encoded first code resource” in claim 13 of the ’842 Patent. Id. As explained
`
`above, the tamperproof overlay file 37 in Waite is encrypted and transmitted (with
`
`a corresponding decryption key) to the personal computer 10 as a single shipping
`
`file 38. EX1012, 3:49-60. Upon receipt, the personal computer 10 opens the
`
`single shipping file 38 and installs the tamperproof overlay file 37, including the
`
`critical program segment 24. EX1012, 3:65-4:2. Thus, the tamperproof overlay
`
`file 37 is not encoded in the software program 16 initially loaded into the personal
`
`computer 10. Therefore, Waite fails to disclose or suggest that said decode
`
`resource is configured to decode said encoded first code resource (included in the
`
`software) upon receipt of said first license key, as in claim 13.
`
`Petitioner asserts that “a POSITA would have been motivated to replace the
`
`decrypt key of Waite with the real key generator that creates a real key (i.e.,
`
`decryption key) after the user enters the product key, customer number, and
`
`machine ID as taught by Cooper in order to decrypt the tamperproof overlay
`
`file of Waite for several reasons.” See Petition, page 70 (emphasis added).
`
`Petitioner’s combination fails to disclose or suggest the above-described
`
`feature of claim 13. The tamperproof overlay file 37 in Waite is encrypted and
`
`15
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`transmitted (with a corresponding decryption key) to the personal computer 10 as a
`
`single shipping file 38. EX1012, 3:49-60. Upon receipt, the personal computer 10
`
`opens the single shipping file 38 and installs the tamperproof overlay file 37,
`
`including the critical program segment 24. EX1012, 3:65-4:2. Thus, the
`
`tamperproof overlay file 37 is not encoded in the software program 16 initially
`
`loaded into the personal computer 10. Modifying Waite in view of Cooper would
`
`not change this fact. Modifying Waite in view of Cooper merely changes how the
`
`tamperproof overlay file 37 is decoded (i.e., using a real key 421 of Cooper).
`
`Therefore, Waite and Cooper, individually or in combination, fail to disclose
`
`or suggest that said decode resource is configured to decode said encoded first
`
`code resource (included in the software) upon receipt of said first license key, as
`
`recited by claim 13. Petitioner has therefore failed to meet its burden to
`
`demonstrate a prima facie case of obviousness for independent claim 13. Based on
`
`the above analysis, there is no likelihood that the claim 11 of the ’842 Patent is
`
`obvious over Waite in view of Cooper. Therefore, the Board should deny the
`
`Petition.
`
`
`
`
`
`
`
`16
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`
`IV. CONCLUSION
`
`For at least the reasons set forth above, Patent Owner respectfully requests
`
`that all challenges in the present IPR be dismissed.
`
`Date: November 13, 2019
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Christopher M. Scurry
`Christopher M. Scurry
`Reg. No. 66,870
`Kenton R. Mullins
`Reg. No. 36,331
`MCDONNELL, BOEHNEN, HULBERT, &
`BERGHOFF, L.L.P.
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`Attorneys for Patent Owner
`
`
`
`17
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response
`
`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)
`
`because it contains fewer than the limit of 14,000 words, as determined by the
`
`word-processing program used to prepare the brief, excluding the parts of the brief
`
`exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: November 13, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Christopher M. Scurry
`Christopher M. Scurry
`Reg. No. 66,870
`MCDONNELL, BOEHNEN,
`HULBERT, & BERGHOFF, L.L.P.
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`
`
`
`
`
`i
`
`
`
`IPR2019-01447
`U.S. Patent 9,104,842
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that an electronic copy of the
`
`foregoing PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT TO 37
`
`C.F.R. § 42.107(a) along with any accompanying exhibits was served on Petitioner’
`
`counsel of record at the following address:
`
`Eliot D. Williams
`G. Hopkins Guy III
`Baker Botts L.L.P.
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7500
`
`Ali Dhanani
`Baker Botts L.L.P.
`910 Louisiana St.
`Houston, TX 77002
`713.229.1108
`
`Date: November 13, 2019
`
`
`
`
`
`
`
`ii
`
`
`
`Respectfully submitted,
`
`By: /s/ Christopher M. Scurry
`Christopher M. Scurry
`MCDONNELL, BOEHNEN,
`HULBERT, & BERGHOFF, L.L.P.
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
