Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________
`
`Case IPR2019-01615
`U.S. Patent 9,716,853
`
`____________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`

`

`Case IPR2019-01615
`Patent No. 9,716,853
`
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`
`TABLE OF CONTENTS ............................................................................................ i
`
`LIST OF EXHIBITS .................................................................................................. v
`
`I.
`
`INTRODUCTION......................................................................................... 1
`
`II. BACKGROUND........................................................................................... 1
`
`A. Technology Background .......................................................................... 1
`
`B. U.S. Patent No. 9,716,853 ....................................................................... 2
`
`C. Prosecution History .................................................................................. 5
`
`D. Person of Ordinary Skill in the Art (POSITA) ........................................ 6
`
`E. Petitioner’s References ............................................................................ 8
`
`1. U.S Patent Application Publication No. 2012/0249890 to
`Chardon (“Chardon”) ......................................................................... 8
`
`2. High-Definition Multimedia Interface Specification Version 1.3a
`(“HDMI v. 1.3a”) ................................................................................ 9
`
`3. U.S Patent Application Publication No. 2009/0254500 to Stecyk
`(“Stecyk”) ......................................................................................... 10
`
`III. CLAIM CONSTRUCTION ........................................................................ 11
`
`A. “for use in controlling each of at least a first functional operation and a
`second functional operation of the intended target appliance” (claim 1)12
`
`IV. THE BOARD SHOULD NOT INSTITUTE INTER PARTES REVIEW .. 13
`
`A. Chardon Does Not Qualify as Prior Art Under 35 U.S.C. § 102(a) ...... 14
`
`B. The Board Should Deny Institution Under 35 U.S.C. § 325(d) ............ 15
`
`1. Factors (a)-(d) weigh in favor of denial of institution. ..................... 17
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`Patent No. 9,716,853
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`2. Factor (e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art. ............... 18
`
`3. Factor (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of prior art or
`arguments. ......................................................................................... 18
`
`C. The Board Should Deny Institution because Petitioner Has Failed to
`Establish a Reasonable Likelihood that Any Challenged Claim Is
`Unpatentable .......................................................................................... 19
`
`1. Chardon in view of HDMI v. 1.3a and Stecyk Does Not Render
`Obvious Claim 1 (Ground #1) .......................................................... 19
`
`(i) There is no motivation to combine Chardon and HDMI v.
`1.3a. ........................................................................................... 20
`
`(ii) There is no motivation to combine Chardon and Stecyk. ......... 25
`
`(iii) There is no motivation to combine HDMI v. 1.3a and
`Steyck. ....................................................................................... 31
`
`2. Chardon in view of HDMI v. 1.3a and Stecyk Does Not Render
`Obvious Claim 3 (Ground #1) .......................................................... 33
`
`3. Chardon in view of HDMI v. 1.3a and Stecyk Does Not Render
`Obvious Claim 5 (Ground #1) .......................................................... 33
`
`4. Chardon in view of HDMI v. 1.3a and Stecyk Does Not Render
`Obvious Claim 7 (Ground #1) .......................................................... 34
`
`V. CONCLUSION ........................................................................................... 34
`
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`Case IPR2019-01615
`Patent No. 9,716,853
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`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Adidas AG v. Nike, Inc.,
`IPR2016-00921, 2019 WL 764060 (P.T.A.B. Feb. 19, 2019) ......................................... passim
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`No. 2018-2140, 2019 U.S. App. LEXIS 32613 (Fed. Cir. Oct. 31, 2019) ..............................34
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017).................................................................16
`
`Haag-Streit AG v. Eidolon Optical, LLC,
`IPR2018-01309 ........................................................................................................................14
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016)..........................................................................................24, 31
`
`Johns Manville Corp.,
`IPR2018-00827 ......................................................................................................21, 23, 26, 27
`
`Merck Animal Health v. Boehringer Ingelheim Vetmedica, Inc.,
`IPR2018-01789 ........................................................................................................................13
`
`NEC Corp. et al. v. Neptune Subsea IP Ltd.,
`IPR2018-01158 ........................................................................................................................20
`
`PersonalWeb Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017)..................................................................................................28
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)................................................................................................11
`
`Sanofi-Aventis Deutschland GMBH v. Mylan Pharms. Inc.,
`No. 2019-1368, 2019 U.S. App. LEXIS 34328 (Fed. Cir. Nov. 19, 2019) .............................34
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................................24, 31
`
`Unified Patents Inc. v. Berman,
`IPR2016-01571 ..................................................................................................................15, 18
`
`VIZIO, Inc. v. Nichia Corp.,
`IPR2017-01608 ........................................................................................................................32
`
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`Patent No. 9,716,853
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`STATUTES
`
`35 U.S.C. § 102(a) ...................................................................................................................14, 15
`
`35 U.S.C. § 325(d) ................................................................................................................. passim
`
`OTHER AUTHORITIES
`
`37 C.F.R. 42.65(a)..........................................................................................................................27
`
`37 C.F.R. §§ 42.8 and 42.6(e) ..........................................................................................................2
`
`37 C.F.R. § 42.24 .............................................................................................................................1
`
`37 C.F.R. § 42.24(a)(i) .....................................................................................................................1
`
`37 C.F.R. § 42.100(b) ....................................................................................................................11
`
`37 C.F.R. § 42.108(c).....................................................................................................1, 14, 19, 34
`
`M.P.E.P. § 602 ...............................................................................................................................17
`
`
`
`
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`Patent No. 9,716,853
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`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`EX2001 Declaration of Dr. Don Turnbull (“Turnbull Decl.”)
`
`v
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`Case IPR2019-01615
`Patent No. 9,716,853
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`I.
`
`INTRODUCTION
`
`Roku, Inc. (“Petitioner”) petitions for Inter Partes Review of Claims 1, 3, 5,
`
`and 7 of U.S. Patent No. 9,716,853 (“the ’853 Patent”), which is owned by
`
`Universal Electronics Inc. (“Patent Owner” or “UEI”). Petitioner relies on a single
`
`Ground, which is a combination of three references. Petitioner does not assert a
`
`single primary reference alone as a ground, nominally because any single reference
`
`is clearly missing key limitations of the claims, but also likely because its primary
`
`reference (Chardon) was expressly considered during prosecution and such a
`
`ground would clearly run afoul of § 325(d). However, with respect to the sole
`
`Ground actually asserted, there is no motivation to combine the references with
`
`any reasonable expectation of success in doing so.
`
`Petitioner thus has not met its burden under 37 C.F.R. § 42.108(c) of
`
`establishing a reasonable likelihood of success that the challenged claims would be
`
`unpatentable in view of the cited references. Accordingly, Patent Owner requests
`
`that the Board deny institution of inter partes review with respect to any of the
`
`challenged claims.
`
`II. BACKGROUND
`
`A. Technology Background
`
`
`
`The challenged ’853 Patent generally relates to devices that can optimize
`
`control of multiple consumer electronic devices. At the time of the ’853 Patent, a
`
`number of communication methods could be used between devices, including Wi-
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`Fi, Bluetooth, and HDMI (EX1001 at 1:45-50). However, many manufacturers
`
`were slow to adopt newer methods, resulting in situations where multiple devices
`
`in the same room or network could only be operated via different communication
`
`methods (see id. at 1:50-59). The invention of the ’853 Patent overcame these
`
`limitations by creating a device that is adapted to allow for multiple
`
`communication methods to facilitate communication across different
`
`communication mediums. Features related to the invention of the ’853 Patent are
`
`incorporated into UEI’s QuickSet® product family, which is a widely deployed
`
`technology in millions of devices around the world including set-top boxes,
`
`televisions, game consoles, smartphones, and tablets to enable effortless
`
`configuration and control of nearly any connected home entertainment device.
`
`B. U.S. Patent No. 9,716,853
`
`The ’853 Patent, titled “System and Method for Optimized Appliance
`
`Control,” was issued on July 25, 2017, from U.S. Patent Application No.
`
`14/948,927, filed on November 23, 2015, which is a continuation of U.S. Patent
`
`Application No. 13/933,877, filed on July 7, 2013, now U.S. Patent No. 9,219,874,
`
`which in turn is a continuation of U.S. Patent Application No. 13/657,176, filed on
`
`October 22, 2012, now U.S. Patent No. 9,215,394. The ’853 Patent also claims
`
`priority to U.S. Provisional Application No. 61/552,857, filed on October 28, 2011,
`
`and U.S. Provisional Application No. 61/680,876, filed on August 8, 2012.
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`The ’853 Patent’s invention generally relates to “a modular hardware and
`
`software solution, [ ] referred to as a Universal Control Engine (UCE), which is
`
`adapted to provide device control access across a variety of available control
`
`methodologies and communication media” (EX1001 at 2:4-10). The UCE “may
`
`be adapted to combine various control methods in order to realize the best control
`
`option for each individual command for each individual device” (id. at 2:16-20).
`
`In particular, the “UCE itself may be adapted to receive command requests from [ ]
`
`a controlling device and apply the optimum methodology to propagate the
`
`command function(s) to each intended appliance,” thus “enabl[ing] a single
`
`controlling device to command the operation of all appliances in a home theater
`
`system while coordinating available methods of controlling each particular
`
`appliance in order to select the best and most reliable method for issuing each
`
`command to each given device” (id. at 2:21-45). For example, “CEC [Consumer
`
`Electronic Control] commands may be used to power on and select inputs on a TV
`
`appliance while IR [infrared] commands may be used to control the volume of the
`
`same TV appliance” (id.).
`
`Petitioner challenges Claims 1, 3, 5, and 7, directed to the universal control
`
`engine (“UCE”) described above, and which are reproduced as follows:
`
`1. A universal control engine, comprising:
`
`a processing device; and
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`a memory device having stored thereon instructions executable by the
`
`processing device, the instructions, when executed by the processing
`
`device, causing the universal control engine
`
`to respond to a detected presence of an intended target appliance
`
`within a logical topography of controllable appliances which includes
`
`the universal control engine by using an identity associated with the
`
`intended target appliance to create a listing comprised of at least a first
`
`communication method and a second communication method
`
`different than the first communication method for use in controlling
`
`each of at least a first functional operation and a second functional
`
`operation of the intended target appliance and
`
`to respond to a received request from a controlling device intended to
`
`cause the intended target appliance to perform a one of the first and
`
`second functional operations by causing a one of the first and second
`
`communication methods in the listing of communication methods that
`
`has been associated with the requested one of the first and second
`
`functional operations to be used to transmit to the intended target
`
`appliance a command for controlling the requested one of the first and
`
`second functional operations of the intended target appliance.
`
`3. The universal control engine as recited in claim 1, wherein the
`
`instructions cause the universal control engine to initiate a detection of
`
`the presence of the intended target appliance within the logical
`
`topography of controllable appliances.
`
`5. The universal control engine as recited in claim 1, wherein the
`
`instruction cause the universal control engine to cause a prompt to be
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`displayed in a display associated with the universal control engine in
`
`response to a detected presence of the intended target appliance within
`
`a logical topography of controllable appliances, the prompt requesting
`
`a user to provide data indicative of the identity associated with the
`
`intended target appliance.
`
`7. The universal control engine as recited in claim 1, wherein the
`
`instructions cause the universal control engine to initiate an
`
`interrogation of the intended target appliance to determine which of a
`
`plurality of communication methods are supported by the appliance
`
`for use in receiving a command for controlling at least one of the first
`
`and second functional operations and using results obtained from the
`
`interrogation to create the listing.
`
`C.
`
`Prosecution History
`
`During the prosecution of the ’853 Patent, the Examiner rejected all claims
`
`as obvious over U.S. Patent No. 7,379,778 (“Hayes”) in view of U.S. Publication
`
`No. 2007/0165555 (“Deng”) or Hayes in view of Deng and further in view of U.S.
`
`Patent No. 6,968,399 (“Noda”) (EX1002 at 170-178).
`
`In response, Applicants explained that “Hayes does not disclose, teach, or
`
`suggest using an identity associated with an intended target appliance to create a
`
`listing” (EX1002 at 207) (emphasis in original). Rather, “Hayes discloses a system
`
`in which a remote control uses location data to determine which command code
`
`sets to use when transmitting commands” (id.) (emphasis in original). Further,
`
`Applicants argued that “Deng also fails to disclose, teach, or suggest using an
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`identity of an appliance to create a listing as claimed” because Deng only describes
`
`selecting one of a low power or high power unit to transmit communications
`
`“based upon a characteristic of the data to be transmitted without regard to any
`
`identity of the intended target device” (id. at 208) (emphasis in original).
`
`Accordingly, the Examiner issued a Notice of Allowance for all claims as
`
`originally filed (id. at 221-229).
`
`D.
`
`Person of Ordinary Skill in the Art (POSITA)
`
`A POSITA would have had a bachelor’s degree which involved software
`
`design and development coursework, for example, electrical engineering, computer
`
`engineering, computer science, cognitive science, industrial engineering,
`
`information systems, information studies, or a similar degree, and at least one year
`
`of work experience in software programming, development, or design of consumer
`
`applications. Additional education might substitute for some of the experience,
`
`and substantial experience might substitute for some of the educational
`
`background.
`
`Petitioner proposes that a POSITA “would have had general knowledge of
`
`home theater systems, control of devices within the home theater systems, and
`
`remote control devices as of October 28, 2011” (Pet. at 13). Further, Petitioner
`
`proposes that a POSITA would have had “at least a bachelor’s degree in an
`
`electrical engineering, computer engineering, or equivalent coursework,” and “at
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`least one year of experience researching or developing structure and operating
`
`principles of common digital content reproduction and related appliances,
`
`contemporary television and home theater standards, and specifications of
`
`consumer digital reproducing devices of the time” (id.).
`
`Notably, Petitioner’s own expert, Dr. Samuel H. Russ, does not agree with
`
`Petitioner’s proposed definition of POSITA nor does he profess to qualify as a
`
`POSITA under Petitioner’s definition (EX1003 (Russ Decl.) at ¶¶ 18-19). Instead,
`
`Dr. Russ proposes that a POSITA “would have had general knowledge of remote
`
`control devices, consumer electronic devices, and various related technologies as
`
`of October 28, 2011” (id. at ¶ 18). Additionally, Dr. Russ suggests that a POSITA
`
`“would have had a bachelor’s degree in electrical engineering or equivalent degree
`
`with two years of work experience relating to communications and consumer
`
`electronics” (id. at ¶ 19).
`
`Patent Owner’s expert, Dr. Don Turnbull, who qualified as a POSITA at the
`
`time of the invention under any of the three proposed definitions, analyzed the
`
`references asserted in the Petition from the point of view of each of the definitions
`
`of POSITA, and the differences in definitions between Patent Owner, Petitioner,
`
`and Petitioner’s expert did not affect the outcome of his analysis (EX2001 at ¶¶ 30-
`
`40).
`
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`E.
`
`Petitioner’s References
`
`1.
`
`U.S Patent Application Publication No. 2012/0249890
`to Chardon (“Chardon”)
`
`Chardon was submitted during the prosecution of the ’853 Patent by
`
`Applicants in an Information Disclosure Statement (“IDS”) on April 29, 2016
`
`(EX1002 at 81). In an Office Action, dated November 4, 2016, the Examiner
`
`expressly acknowledged that the IDS, which includes Chardon, was considered
`
`(EX1002 at 170). Additionally, the Examiner signed and dated the IDS as
`
`considered on October 26, 2016 (EX1002 at 182-186). And Chardon is cited on
`
`the face of the ’853 Patent.
`
`Chardon was published on October 4, 2012, and “generally relates to
`
`remote-control systems” that utilize the “High Definition Multi-Media Interface
`
`(HDMI) standard [which] specifies the Consumer Electronic Control (CEC)
`
`standard, which provides for connected HDMI appliances (e.g., connected via
`
`HDMI cables) to remotely control one another” (EX1005 (Chardon) at [0001],
`
`[0003]). According to Chardon, “[o]ne complication that the CEC standard
`
`introduces is the allowance of custom CEC command codes for HDMI appliances”
`
`(id. at [0004]). Because “not all HDMI appliances that are interconnected will be
`
`configured to understand the custom CEC command codes of other HDMI
`
`appliances” (id.), Chardon suggests that “new remote-control systems . . . are
`
`needed to provide solutions for known short comings in the CEC standard” (id. at
`
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`[0005]). Specifically, Chardon teaches a “remote-control engine is configured to
`
`identify CEC command codes, which are transferred over the bus and that are not
`
`in the sets of known CEC command codes, which are stored in the local memory”
`
`(id. at [0052]), “the unrecognized CEC command code may be transferred from the
`
`remote-control engine . . . to the remote server,” and “the remote server may be
`
`configured to transfer function information for the unrecognized CEC command
`
`code to the remote-control engine so that the remote-control engine will thereafter
`
`recognize the previously unrecognized CEC command codes” (id. at [0053]).
`
`2. High-Definition Multimedia Interface Specification
`Version 1.3a (“HDMI v. 1.3a”)
`
`HDMI v. 1.3a is allegedly dated November 10, 2006, and is a specification
`
`to describe the High-Definition Multimedia Interface (“HDMI”) “for transmitting
`
`digital television audiovisual signals from DVD players, set-top boxes and other
`
`audiovisual sources to television sets, projectors and other video displays”
`
`(EX1010 (HDMI v. 1.3a) at 1). According to HDMI v. 1.3a, HDMI “can carry
`
`high quality multi-channel audio data and can carry all standard and high-
`
`definition consumer electronics video formats” (id.). HDMI v. 1.3a is one of many
`
`versions of the HDMI standard that dates back to 2002 with version 1.0 (id. at iiv-
`
`v). According to HDMI v. 1.3a, “[a]ll standards are subject to revision, and parties
`
`to agreements based on this standard are encouraged to investigate the possibility
`
`of applying the most recent editions of the standards listed below” (id. at 1).
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`3.
`
`U.S Patent Application Publication No. 2009/0254500
`to Stecyk (“Stecyk”)
`
`Stecyk was published on October 8, 2009, and discloses “apparatus,
`
`methods, and systems for centrally controlling the operation of devices within a
`
`network of consumer electronics systems” (EX1006 (Stecyk) at [0001]).
`
`According to Stecyk, the “United States and other countries are quickly
`
`transitioning to digital television (DTV) to take advantage of high definition TV
`
`broadcasts” (id. at [0002]). However, “[d]igital systems and related standards, e.g.,
`
`IEEE 1394, provide no way to control conventionally wired, IR signal controlled,
`
`analog audio-video (AV) devices (IRC devices), such as analog VCRs, DVD
`
`players, cable and satellite boxes, and AV receivers, and does nothing to eliminate
`
`the myriad of cables, connectors and remotes necessary to connect and control a
`
`mixed analog and digital home theater network system” (id. at [0003]). Thus,
`
`Stecyk discloses “a primary display and control unit (PDCU), e.g., a television”
`
`(id. at [0007]) which includes modules to “translate[] the commands from the
`
`remote as appropriate and issue[] commands in the language appropriate for the
`
`device being controlled” (id. at [0071]). In particular, the PDCU or television
`
`“includes a library of device specific IR codes for supported [IR controlled]
`
`devices” (id. at [0051]). Similarly, “[t]o communicate and control a wide variety
`
`of 1394 devices, the 1394 control module 120 preferably maintains a device
`
`control module (DCM) 122 for each 1394 device” (id. at [0088]). “As a result, the
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`user can use the same remote buttons to operate 1394 and IRC devices” (id. at
`
`[0071]).
`
`III. CLAIM CONSTRUCTION
`
`Because the Petition was filed after November 13, 2018, the claims are
`
`interpreted using the same standard applied by the district courts, as articulated in
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). See 37 C.F.R. §
`
`42.100(b). Under the Phillips standard, claim terms are generally given their
`
`ordinary and customary meaning as understood by a person of ordinary skill in the
`
`art when read in the context of the specification and prosecution history. Phillips,
`
`415 F.3d at 1313. However, a claim term will not receive its ordinary meaning if
`
`the patentee acted as his or her own lexicographer and clearly set forth a definition
`
`of the disputed claim term in either the specification or prosecution history. Id. at
`
`1316. Extrinsic evidence (such as expert testimony) is also considered but is given
`
`less weight than intrinsic evidence (claims, specification, and prosecution history)
`
`and cannot be used to contradict intrinsic evidence. Id. at 1317-19.
`
`Petitioner proposes one term for construction, but this term is understood by
`
`its plain and ordinary meaning. Moreover, Petitioner is ambiguous as to what
`
`construction it actually seeks. Specifically, it is unclear whether Petitioner seeks
`
`its proposed construction that was rejected in related District Court litigation or the
`
`construction ordered by the District Court. In the absence of a clearly articulated
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`position otherwise, this term should be given its plain and ordinary meaning, and
`
`the Board should decline to further construe the term. Nevertheless, should the
`
`Board decide to construe the term, Patent Owner seeks to clarify that the District
`
`Court did not fully adopt Petitioner’s construction during related litigation, as
`
`Petitioner represents.
`
`Patent Owner reserves the right to put forth additional terms for construction
`
`should the Petition be instituted.
`
`A.
`
`“for use in controlling each of at least a first functional operation
`and a second functional operation of the intended target
`appliance” (claim 1)
`
`It is true that Petitioner proposed this term be construed during related
`
`District Court litigation and that the District Court construed this term to mean “for
`
`use in controlling the same at least a first functional operation and a second
`
`functional operation of the same intended target appliance” (EX1017 at 31).
`
`However, the meaning of this term is understood according to its plain and
`
`ordinary meaning and does not warrant express construction. Furthermore,
`
`Petitioner is ambiguous as to whether it currently seeks the District Court’s
`
`construction or its own rejected proposed construction put forth during litigation
`
`(Pet. at 15-17). Given that Petitioner has not clearly articulated what construction
`
`it seeks or why it matters, the Board should decline to construe this term beyond its
`
`plain and ordinary meaning.
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`However, should the Board decide to construe this term, Petitioner is
`
`incorrect that the “district court effectively adopted Petitioner Roku’s position”
`
`(Pet. at 16). Specifically, before the District Court, “Roku [also] propose[d] a
`
`negative claim limitation, arguing that creating a listing ‘does not include selecting
`
`a communication protocol and thereafter using the selected communication
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`protocol for any and all commands sent to the target appliance’” (EX1017 at 35).
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`The District Court held that the evidence “does not support limiting the meaning of
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`the claims of the ’853 Patent to add the negative limitation that Roku proposes”
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`(id. at 36). Thus, the District Court specifically rejected portions of Petitioner’s
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`proposed construction.
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`To the extent Petitioner’s analysis has relied on its own proposed
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`construction rejected by the District Court, in contrast to the correct construction
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`for this claim term, the Board should deny institution on at least this basis. Intervet
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`Inc. a/k/a Merck Animal Health v. Boehringer Ingelheim Vetmedica, Inc.,
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`IPR2018-01789 (Paper 9) at 13 (P.T.A.B. Apr. 16, 2019) (“[T]he Board may, and
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`routinely does, decline to institute trial where the challenge asserted in a petition is
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`keyed to an incorrect claim construction.”).
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`IV. THE BOARD SHOULD NOT INSTITUTE INTER PARTES REVIEW
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`When Petitioner’s alleged prior art references are considered in the proper
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`timeframe and in an accurate context, it is clear that the Petitioner’s Ground fails to
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`Case IPR2019-01615
`Patent No. 9,716,853
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`carry its burden of proving a likelihood that the challenged claim is unpatentable.
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`See 37 C.F.R. § 42.108(c).
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`First, Petitioner does not assert Chardon alone as a ground, not only because
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`Chardon is clearly missing key limitations of the claims, but also likely because
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`Chardon was expressly considered during prosecution and such a ground would
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`clearly run afoul of § 325(d) (see infra Section IV.B). Second, with respect to the
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`sole Ground actually asserted, Petitioner relies on a combination of three
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`references, for which there is no motivation to combine with any reasonable
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`expectation of success in doing so (see infra Section IV.C).
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`A. Chardon Does Not Qualify as Prior Art Under 35 U.S.C. § 102(a)
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`As a preliminary matter, Petitioner erroneously alleges that Chardon
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`qualifies as prior art under pre-AIA 35 U.S.C. §102(a) (Pet. at 4). Petitioner did
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`not make any showing that the ’853 Patent is not entitled to its earliest effective
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`filing date, i.e., the October 28, 2011 filing date of provisional application No.
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`61/552,857. In fact, Petitioner assumed that October 28, 2011 was the proper date
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`for its analysis of a person of ordinary skill in the art (Pet. at 12-13). See Haag-
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`Streit AG v. Eidolon Optical, LLC, IPR2018-01309 (Paper 14), 2019 Pat. App.
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`LEXIS 106, *13-14 (P.T.A.B. January 11, 2019) (Petitioner’s assertion of the
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`relevant date for a person of ordinary skill supports that date as the effective filing
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`date).
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`Case IPR2019-01615
`Patent No. 9,716,853
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`In order to qualify as prior art under pre-AIA 102(a), Chardon must be
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`described in a printed publication in this or a foreign country, before October 28,
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`2011. Chardon’s publication date is October 4, 2012, almost a year too late
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`(EX1005). Accordingly, Chardon does not qualify as prior art under pre-AIA 35
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`U.S.C. §102(a).
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`B.
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`The Board Should Deny Institution Under 35 U.S.C. § 325(d)
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`The Board may deny institution under Section 325(d) where the petition
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`includes “the same or substantially the same prior art or arguments [that]
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`previously were presented to the Office.” 35 U.S.C. § 325(d); see also Unified
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`Patents Inc. v. Berman, IPR2016-01571 (Paper 10) at 9 (P.T.A.B. Dec. 14, 2016).
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`Determining whether to exercise discretion under Section 325(d) involves
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`weighing the following non-exclusive factors:
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`(a) the similarities and material differences between the asserted art
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`and the prior art involved during examination;
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`(b) the cumulative nature of the asserted art and the prior art evaluated
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`during examination;
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`(c) the extent to which the asserted art was evaluated during
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`examination, including whether the prior art was the basis for
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`rejection;
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`Case IPR2019-01615
`Patent No. 9,716,853
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`(d) the extent of the overlap between the arguments made during
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`examination and the manner in which Petitioner relies on the prior art
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`or Patent Owner distinguishes the prior art;
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`(e) whether Petitioner has pointed out sufficiently how the Examiner
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`erred in its evaluation of the asserted prior art; and
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`(f) the extent to which additional evidence and facts presented in the
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`Petition warrant reconsideration of prior art or arguments.
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`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, at
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`17–18 (P.T.A.B. Dec. 15, 2017) (informative).
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`In the present case, Petitioner’s sole asserted Ground is the combination of
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`Chardon, HDMI v. 1.3a, and Stecyk (Pet. at 3), in which Petitioner states Chardon
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`is the “primary reference” (Pet. at 2). To the extent Petitioner improperly attempts
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`to characterize its sole Ground as including an additional unnamed ground of
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`Chardon alone in order to overcome its failure to show motivation to combine (see
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`infra Section IV.C), Chardon was expressly considered during prosecution of the
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`’853 Patent. Petitioner makes no effort to explain whether or how the Examiner
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`erred