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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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`NETFLIX, INC. and ROKU, INC.
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`Petitioners
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00041
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`PATENT 8,407,609
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`IPR2020-00041
`U.S. Patent No. 8,407,609
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II.
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`THE ’609 PATENT ......................................................................................... 1
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`III.
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`PROSECUTION HISTORY OF THE ‘609 PATENT .................................... 6
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`IV. RELATED PROCEEDINGS .......................................................................... 9
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`V.
`
`THE PETITION IMPROPERLY REDUNDANTLY
`CHALLENGES THE CLAIMS AT ISSUE.................................................... 1
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`VI. THE PETITIONER HAS FAILED TO SHOW THAT THE
`ASSERTED ART IS NOT CUMULATIVE OF THE NUMEROUS
`REFERENCES RELIED ON BY THE EXAMINER DURING THE
`EXTENSIVE PROSECUTION ....................................................................... 4
`
`VII. THE PETITION REDUNDANTLY CHALLENGES AT LEAST
`CLAIM 1 OF THE ‘609 PATENT, ALREADY THE SUBJECT
`OF INTER PARTES REVIEW, AND SHOULD BE DENIED
`INSTITUTION UNDER 35 U.S.C. 314 ......................................................... 8
`
`VIII. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM ............... 11
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`A.
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`B.
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`LEVEL OF ORDINARY SKILL IN THE ART ................................12
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`CLAIM CONSTRUCTION ................................................................12
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`1.
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`2.
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`3.
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`Claim Construction Standard ....................................................12
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`“computer system” ....................................................................13
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`“streamed” .................................................................................16
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`C.
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`Petitioner has failed to establish that a POSA would be likely
`to modify Davis with Choi to teach at least the Claim 1 recitation
`“receiving at least a portion of the identifier data from the user's
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`ii
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`computer responsively to the timer applet each time a
`predetermined temporal period elapses using the first
`computer system” (Ground 1) .............................................................18
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`D.
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`The Petition fails to show that a POSA would have modified
`Siler in view of Davis to obtain the Claim 1 recitation
`“wherein each provided webpage causes corresponding
`digital media presentation data to be streamed from a second
`computer system distinct from the first computer system
`directly to the user’s computer independent of the first
`computer system” (Ground 2) .............................................................29
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`E.
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`No Prima Facie Obviousness for Dependent Claims 2 and 3 .............34
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`IX. CONCLUSION .............................................................................................. 34
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`CERTIFICATE OF COMPLIANCE .......................................................................... i
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`CERTIFICATE OF SERVICE ................................................................................. ii
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`iii
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`U.S. Patent No. 8,407,609
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`Exhibits
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`
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`File History of ‘609 Patent ........................................................ Exhibit 2001
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`Claim Construction Memorandum and Order, Case 2:18-CV-00502-JRG-
`RSP (E.D. Tex.), Dkt. 149 (Jan. 20, 2020) ............................... Exhibit 2002
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (the “Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to Petition IPR2020-00041 for Inter Partes Review (“Pet.” or “Petition”)
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`of United States Patent No. 8,407,609 (“the ’609 patent” or “EX1001”) filed by
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`Netflix, Inc. and Roku, Inc. (“Petitioners”). The instant Petition is procedurally and
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`substantively defective for at least the reasons set forth herein.
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`
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`II. THE ’609 PATENT
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`The ’609 patent is titled “System and method for providing and tracking the
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`provision of audio and visual presentations via a computer network.” The ʼ609
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`patent issued March 26, 2013, from U.S. Patent Application No. 12/545,131 filed
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`August 21, 2009, claiming priority to provisional application No. 61/090,672, filed
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`on August 21, 2008.
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`The inventors of the ’609 patent observed that, because of the virtually
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`unlimited content available via the Internet, it can provide difficult for a user of an
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`Internet enabled computer to identify and locate content of interest. EX1001, 1:50-
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`54. The inventors note that search engines do not always return meaningful results
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`in response to a query, due to the complex nature and nuances of human language,
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`and efforts by document authors or providers to fool or trick the indexer into ranking
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`its documents above those of others. EX1001; 1:55-2:1.
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`1
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`Embodiments of the ‘609 Patent address this challenge by aggregating
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`content, including audio and video content suitable for streaming. EX1001, 3:56-
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`64.
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`
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`As illustrated in Figure 1, a system 10 includes user computers 20, network
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`server computers 30 and a network 40 interconnecting computers 20, 30 together.
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`The system 10 also includes personal computing devices 22 and a personal digital
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`assistant computer/web-enabled cell phone computer 24. Communication links 26
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`communicatively couple devices 20 and server computers 30 with network 40.
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`2
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`EX1001, 3:65-4:19.
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`Web pages may be provided to user computers 20, personal computing
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`devices 22 and cell phone computer 24 by server computers 30. As shown in Figure
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`2, a web page 200 provided by a server computer 30 aggregates audio and/or video
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`content for presentation to users of computers 20. EX1001, 4:22-27. By user
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`selection of a presentation on a web page 200, a suitably populated web page 900,
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`shown in Figure 9, may be served to the user’s computer. Portion 930 of the web
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`page 900 may be used to playback a selected presentation such as by streaming the
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`content to a media player application or plugin. It may be desirable to reliably
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`identify how long the media was actually, or may typically be played, such as to
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`value portions 910, 920 as advertising space. EX1001, 11:59-12:15.
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`3
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`Where content is not uploaded to the computer server or system 30 of the
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`operator serving web page 900, and is instead remotely provided from another
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`computer system, the operator of system 30 does not necessarily exercise control
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`over the content data storage resource and may not be able to directly track how
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`long content is streaming to a particular user. EX1001, 12:36-45.
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`A solution to this challenge of tracking, by a server system, of playback of
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`content streamed from another resource to a user device is discussed in process
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`1000, illustrated in Figure 10 of the ‘609 Patent. The user’s computer receives a
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`web page, such as from system 30 of Fig. 1, at block 1010. The received web page
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`may take the form of web page 900 of Figure 9, which includes a portion that may
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`be used to play back user-selected content on the user’s computer, which content
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`may be provided by a third party’s computer system. EX1001, 12:56-66
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`
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`
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` A timer applet on page 900 may be used to indicate when a predetermined
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`temporal period has elapsed. Examples of those temporal periods given in the ‘609
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`Patent include 10, 15 and 30 seconds. The timer applet may be started at block 1020
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`of Figure 10. EX 1001, 13:4-9. When the timer applet determines that the
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`predetermined temporal period has elapsed, it signals its continued execution to the
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`user’s computer system 20. In response, the server system may log receipt of this
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`indication. In embodiments, the applet may cause identifying data, such as a cookie,
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`or associated data, to be transmitted from the user’s computer to the server, where
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`the cookie, or associated data, may be stored logged, such as by using database
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`server 32. EX1001, 13:10-23.
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`In an example, at each expiration of the predetermined temporal period as
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`determined by the timer applet, a table entry may be made of the user, the page the
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`user is on, and to the extent the user is on the same page as was the user upon the
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`last expiration of the timer, the user’s total time on the same page, using database
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`server 32. EX1001, 13:24-30. In certain embodiments, the timer applet may cause
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`data indicative of another temporal cycle having passed while the web page
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`presents the presentation. In that case, a value indicative of the number of cycles
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`that have passed, stored in database server 32, may be incremented each time the
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`data is received. EX1001, 13:36-42.
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`Using these embodiments, the capability is provided to know how long a
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`particular viewer spent viewing a particular show on a particular page. EX1001,
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`13:43-48.
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`III. PROSECUTION HISTORY OF THE ‘609 PATENT
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`The prosecution history of the ‘609 Patent includes substantive examination,
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`including reliance by the Examiner at the USPTO on one reference to reject as-filed
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`claims, and inclusion of detailed comments as to three further references by the
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`Examiner in an Office Action.
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`In a first Non-Final Office Action, the Examiner rejected all pending claims
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`under 35 U.S.C. 103 over Cobley (U.S. Patent Pub 2002/0198781). EX2001, p. 65.
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`The Examiner alleged that Cobley discloses, inter alia, providing identifier data to
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`a user’s computer system for each digital media presentation system, an applet
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`operative by the user’s computer as a timer, receiving at least a portion of the
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`identifier data provided to the user’s computer responsively to the timer applet each
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`time a predetermined temporal period elapses using the first computer system, and
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`storing data indicative of received identifier data. Id. at 66.
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`The Examiner also provided summaries of three references, identified as
`
`pertinent to the disclosure, namely Odom (U.S. Patent No. 6,606,102), Shuster
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`(U.S. Patent Pub. 2011/0082754) and Gaidemak (U.S. Patent Pub. 2006/0224693).
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`Id. at 67-68. The Examiner noted that Shuster discloses a tool where, upon entering
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`a website, the time at which the user enters is determined, and an applet may begin
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`a count down for a predetermined time period. Id. at 68.
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`In response, the applicant amended Claim 1 to recite “wherein each stored
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`data is together indicative of a cumulative time the corresponding web page was
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`displayed by the user’s computer.” Id. at 33. The accompanying arguments noted
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`that Cobley failed to each or suggest this recitation, as well as the recitations
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`“receiving at least a portion of the identifier data from the user’s computer
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`responsively to the timer applet each time a predetermined temporal period elapses
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`using the first computer system;” and “storing data indicative of the received at least
`
`portion of the identifier data using the first computer system.” Id. at 37.
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`
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`In response, the Examiner issued a Notice of Allowance, and the
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`application proceeded to grant. EX2001, 21-25.
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` For the convenience of the Board, the text of challenged independent claim
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`1, and challenged claims 2 and 3, are reproduced here:
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`Claim 1 recites:
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`
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`1.
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`A method for tracking digital media presentations delivered from
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`a first computer system to a user’s computer via a network comprising:
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`providing a corresponding web page to the user’s computer for each
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`digital media presentation to be delivered using the first computer system;
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`providing identifier data to the user’s computer using the first computer
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`system;
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`providing an applet to the user’s computer for each digital media
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`presentation to be delivered using the first computer system, wherein the
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`applet is operative by the user’s computer as a timer;
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`receiving at least a portion of the identifier data from the user’s
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`computer responsively to the timer applet each time a predetermined temporal
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`period elapses using the first computer system; and
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`storing data indicative of the received at least portion of the identifier
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`data using the first computer system;
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`wherein each provided webpage causes corresponding digital media
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`presentation data to be streamed from a second computer system distinct from
`
`the first computer system directly to the user’s computer independent of the
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`first computer system;
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`wherein the stored data is indicative of an amount of time the digital
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`media presentation data is streamed from the second computer system to the
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`user’s computer; and
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`wherein each stored data is together indicative of a cumulative time the
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`corresponding web page was displayed by the user’s computer.
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`2. The method of claim 1, wherein the storing comprises incrementing
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`a stored value dependently upon the receiving.
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`3. The method of claim 2, wherein the received data is indicative of a
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`temporal cycle passing.
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`IV. RELATED PROCEEDINGS
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`The following proceedings are currently pending (including stayed) cases
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`concerning the ’609 patent (EX1001).
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`Case Name
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`Case Number Court Filing Date
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`Uniloc 2017 LLC et al v. Google LLC
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`2-18-cv-00502 TXED 11/17/2018
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`Uniloc 2017 LLC v. Netflix, Inc.
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`8-18-cv-02055 CACD 11/17/2018
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`Uniloc 2017 LLC v. American
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`8-18-cv-02056 CACD 11/17/2018
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`Broadcasting Companies, Inc.
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`Uniloc 2017 LLC v. Vudu, Inc.
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`1-19-cv-00183 DED
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`1/30/2019
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`Uniloc 2017, LLC v. Sling TV, LLC
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`1-19-cv-00278 COD
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`1/31/2019
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`Uniloc 2017 LLC v. Roku, Inc.
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`8-19-cv-00295 CACD 2/14/2019
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`Sling TV LLC et al v. Uniloc 2017 LLC
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`IPR2019-01367 PTAB
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`7/22/2019
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`Google, LLC v. Uniloc 2017 LLC
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`IPR2020-00115 PTAB 10/31/2019
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`The district court in the Google -502 case cited above has issued a Claim
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`Construction Memorandum and Order interpreting terms of the ’609 patent. Ex.
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`2002.
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`
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`V. THE PETITION IMPROPERLY REDUNDANTLY CHALLENGES
`THE CLAIMS AT ISSUE
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`The Petition redundantly challenges claim 1-3 of the ’609 Patent on two
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`different grounds, without providing any alleged justification for such inefficient
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`redundancies.
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`1
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`As the Board has previously explained, “multiple grounds, which are
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`presented in a redundant manner by a petitioner who makes no meaningful
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`distinction between them, are contrary to the regulatory and statutory mandates, and
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`therefore are not all entitled to consideration.” See Liberty Mut. Ins. Co. v.
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`Progressive Cas. Ins. Co., No. CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012).
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`Such redundancies place a significant burden on both the Board and the patent
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`owner, causing unnecessary delay, compounding costs to all parties involved, and
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`compromising the ability to complete review within the statutory deadline. Id.; 3 7
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`C.F.R. § 42.1(b); see also 37 C.F.R. § 42.108.
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`The Petition presents grounds that are horizontally redundant with respect to
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`each other. Horizontal redundancy “involves a plurality of prior art applied not in
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`combination to complement each other but as distinct and separate alternatives.”
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`Liberty Mut., CBM2012-00003, Paper 7 at 3. In such instances where reliance on
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`distinct and separate alternatives is alleged to sufficiently present a prima facie case
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`of invalidity, such reliance fails where “the associated arguments do not explain why
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`one reference more closely satisfies the claim limitation at issue in some respects
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`than another reference, and vice versa.” Id. (emphasis in original). “Because the
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`references are not identical, each reference has to be better in some respect or else
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`the references are collectively horizontally redundant.” Id.
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`As the Board explained, the Petitioner in Liberty Mutual did “not articulate
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`any relative weakness in any respect for any one of the …references.” Liberty Mut.,
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`CBM2012-00003, Paper 7 at 6. Further, the Petitioner in Liberty Mutual did not
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`“articulate any relative strength in any respect for any one of the… references.” Id.
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`2
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`Here, Petitioner similarly makes no effort to justify its horizontally redundant
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`theories by explaining the relative strength and relative weakness of the alternative
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`grounds, one of which cites Davis as a primary reference and Choi as a secondary
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`reference, and the other of which cites Davis as a secondary reference and Siler as
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`the primary reference. Whether one of the alternative grounds is better from all
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`perspectives or there is no difference in the grounds, the Petitioner should only
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`assert one of the grounds. Id. at 12. “Only if the Petitioner reasonably articulates why
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`each ground has strength and weakness relative to the other should both grounds be
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`asserted for consideration.” Id. (emphasis added). Here, Ground 1 and Ground 2
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`differ in the selection and arrangement of references. However, Petitioner will not
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`even acknowledge that one ground is better or that there are any strengths and
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`weaknesses of one ground over the other. Instead, the Petition fails to identify any
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`teaching of Davis that is allegedly absent in from Ground 1 and must be supplied
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`by Siler, or any teaching of Choi that is absent from Ground 1 and must be supplied
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`by Davis.
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`The Board in Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B.
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`July 23, 2014), flatly rejected a similar attempt to hedge bets and unnecessarily
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`multiply the work of both the Board and the Patent Owner. The Board there found
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`insufficient the petitioner’s “conclusory assertion” that “[t]o the extent [the first
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`prior art reference] may not explicitly teach” the limitation, the second prior art
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`reference “explicitly teaches this limitation.” The Board explained that “such an
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`assertion fails to resolve the exact differences sought to be derived from” the second
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`3
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`prior art reference. Id. Here, the Petitioner has not even provided such a conclusory
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`assertion.
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`Although the Board cannot institute only on some grounds, “even when a
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`petitioner demonstrates a reasonable likelihood of prevailing with respect to one
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`or more claims, institution of review remains discretionary.” SAS Inst. Inc. v.
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`Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with
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`discretion on the question whether to institute review . . . .” (emphasis omitted));
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`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he
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`PTO is permitted, but never compelled, to institute an IPR proceeding.”). Thus,
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`the Board should consider, at most, only one of the two redundant asserted grounds,
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`and if that one considered ground is found not to merit institution (as neither of the
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`two deficient grounds here should), the Board is under no obligation to consider
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`the second ground, but can, and should, simply deny institution without expending
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`resources on the second redundant ground.
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`VI. THE PETITIONER HAS FAILED TO SHOW THAT THE ASSERTED
`ART IS NOT CUMULATIVE OF THE NUMEROUS REFERENCES
`RELIED ON BY THE EXAMINER DURING THE EXTENSIVE
`PROSECUTION
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`It is clear under the applicable standards of Becton, Dickinson and Co. v. B.
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`Braun Melsungen AG, IPR2017-01586, Paper No. 8 (2017), that the Board should
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`decline to exercise its discretion to institute Inter Partes Review based on the prior
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`art relied upon in the Petition. The Board stated in Becton, Dickinson that:
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`In evaluating whether to exercise our discretion when the same or
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`substantially the same prior art or arguments previously were presented
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`to the Office under section 325(d), we have weighed some common non-
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`exclusive factors, such as: (a) the similarities and material differences
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`between the asserted art 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; (c) the extent to which the asserted art was
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`evaluated during examination, including whether the prior art was the
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`basis for rejection; (d) the extent of the overlap between the arguments
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`made during examination and the manner in which Petitioner relies on
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`the prior art or Patent Owner distinguishes the prior art; (e) whether
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`Petitioner has pointed out sufficiently how the Examiner erred in its
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`evaluation of the asserted prior art; and (f) the extent to which additional
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`evidence and facts presented in the Petition warrant reconsideration of
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`the prior art or arguments.”
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`Id. at 17-18 (emphasis in original).
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`The Petition not only fails to provide an analysis as to why the present prior art
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`is not cumulative under Becton Dickinson, the Petitioners here did not even provide
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`a copy of the file wrapper of the ‘609 Patent as an Exhibit. The Petition provides no
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`analysis as to why the prior art asserted is not cumulative of any of the references
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`either relied upon by the Examiner during prosecution in a claim rejection, or
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`discussed by the Examiner in detail in an Office Action. Indeed, the Petition is devoid
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`of any analysis of any alleged differences between any of the four references either
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`relied upon or discussed by the Examiner in detail, namely Cobley, Odom, Shuster,
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`and Gaidemak, on the one hand, and the Davis, Choi and Siler references asserted in
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`the Petition, on the other.
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`As to the first factor, the similarities and material differences between the
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`asserted art and the prior art asserted during examination, Petitioners provide nothing
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`but a conclusory statement that the prior art and arguments in the Petition are not
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`cumulative of the prior art evaluated during examination, without specifically
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`alleging that any of the three references asserted in the Petition include teachings not
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`provided in any of the four references relied upon by the Examiner, or substantively
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`discussed by the Examiner, during prosecution. Indeed, Petitioners rely on Davis for
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`teaching an applet that provides data indicative of a time period that a web page is
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`displayed on a user’s computer (Pet. 26), but the Examiner stated:
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`
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`Cobley teaches that a timing applet is embedded in a page that has
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`a first frame in which the timing applet is embedded and a second frame
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`into which the media is pulled. When the page remains loaded for the
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`timing period of the applet, the timing applet sends a message to the
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`server…
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`EX2001, p. 66. Thus, as both Davis and Cobley are alleged to teach a timing applet
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`that sends a message to a server indicative of a time that a web page remains loaded
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`or displayed on a client computer, Davis is cumulative of Cobley.
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`Similarly, the Examiner stated that Shuster (U.S. Patent Pub. 2011/0082754)
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`discloses a tool where, upon entering a website, the time at which the user enters is
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`determined, and an applet may begin a count down for a predetermined time period.
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`EX2001, p. 68. The timing applet of Davis is thus further cumulative of Shuster.
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` As to the second factor, the cumulative nature of the art cited during
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`examination and the asserted art, the Petition provides no indication of any
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`differences between Cobley, Odom, Shuster and Gaidemak, on the one hand, and the
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`asserted art on the other. Further, as demonstrated above, Davis is cumulative in
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`relevant part of both Cobley and Shuster. As to the third factor, the extent to which
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`the asserted art was considered by the Examiner, in fact, the Cobley reference was
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`relied upon for a rejection, and the Odom, Shuster and Gaidemak references were
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`substantively discussed in an Office Action, and thus were all substantively
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`considered by the Examiner. Moreover, Petitioner has provided no basis for
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`concluding that any of the newly-presented asserted art is not cumulative of the four
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`references substantively discussed by the Examiner during prosecution. Given these
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`numerous factors militating against institution, as well as the Petitioner’s failure even
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`to attach a copy of the file history of the ‘609 Patent as an Exhibit, possibly to attempt
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`to downplay the cumulative nature of the asserted art from the Board, institution
`
`should be denied here. See Medtronic, Inc. v. NuVasive, Inc., Case IPR2014-00487,
`
`slip op. at 6 (Paper 8) (Sept. 11, 2014) (informative) (denying institution, explaining
`
`in part that “[w]hile Petitioner argues that the grounds are not redundant to those
`
`instituted on in the ’506 Proceeding, Petitioner does not provide any specific
`
`reasoning to support that argument, other than to state that the grounds are based on
`
`different prior art references.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`
`
`7
`
`
`
`IPR2020-00041
`U.S. Patent No. 8,407,609
`
`
`Case IPR2013-00324, slip op. at 6 (Paper 19) (Nov. 21, 2013) (informative) (“IBS
`
`does not distinguish any teaching present in Odedra that is lacking from Ju, Tsien, or
`
`any of the other references cited in the 128 Petition.”).
`
`
`VII. THE PETITION REDUNDANTLY CHALLENGES AT LEAST
`CLAIM 1 OF THE ‘609 PATENT, ALREADY THE SUBJECT OF
`INTER PARTES REVIEW, AND SHOULD BE DENIED
`INSTITUTION UNDER 35 U.S.C. 314
`
`The present Petition, and the Petition in IPR2019-01357, both challenge
`
`Claim 1 of the ‘609 Patent. This redundant challenge should be denied institution.
`
` The Board’s precedential decision in General Plastic Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential)
`
`provides a set of non-exclusive factors to determine whether a petitioner’s filing of
`
`follow-on petitions has caused “undue equities and prejudices to Patent Owner.”
`
`Slip. op at 16-17. The Board directs parties to those factors in the Consolidated
`
`Office Patent Trial Practice Guide (November 2019) (“Practice Guide”) Here,
`
`those factors militate in favor of the Board exercising its discretion under 35 U.S.C.
`
`314(a) and 37 C.F.R. 42.108(a) to deny institution.
`
`The non-exclusive factors are:
`
`1. whether the same petitioner previously filed a petition directed to the same
`
`claims of the same patent;
`
`
`
`8
`
`
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`IPR2020-00041
`U.S. Patent No. 8,407,609
`
`2. whether at the time of filing of the first petition the petitioner knew of the
`
`prior art asserted in the second petition or should have known of it;
`
`3. whether at the time of filing of the second petition the petitioner already
`
`received the patent owner’s preliminary response to the first petition or received
`
`the Board’s decision on whether to institute review in the first petition;
`
`4. the length of time that elapsed between the time the petitioner learned of
`
`the prior art asserted in the second petition and the filing of the second petition;
`
`5. whether the petitioner provides adequate explanation for the time elapsed
`
`between the filings of multiple petitions directed to the same claims of the same
`
`patent;
`
`6. the finite resources of the Board; and
`
`7. the requirement under 35 U.S.C. 316(a) (11) to issue a final determination
`
`not later than 1 year after the date on which the Director notices institution of
`
`review.
`
`Here, Petitioner Netflix waited until seven days before the end of the one year
`
`period to file the present Petition, clearly seeking to take advantage of any other
`
`filings. This long delay in filing the Petition here contrasts with the conduct of the
`
`Petitioner in Hulu, LLC v. Sound Innovations, LLC, IPR2018-00366, Paper No. 11
`
`(PTAB July 6, 2018), where a delay in filing a Petition was justified. There, the
`
`Petitioner, far from waiting until just days before the expiration of the one year time
`
`
`
`9
`
`
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`IPR2020-00041
`U.S. Patent No. 8,407,609
`
`
`period, filed its Petition months before the one year time bar. Further, in Hulu, the
`
`Board noted with approval the Petitioner’s conduct in not awaiting further filings by
`
`the Patent Owner, stating:
`
`Petitioner chose to file this Petition months before the one year time bar
`
`and weeks before Patent Owner filed its preliminary responses in
`
`IPR2018-00017 (Paper 11, filed Jan. 18, 2018) and IPR2018-00096
`
`(Paper 9, filed February 1, 2018).
`
`Id. at 14 (emphasis added). Here, the Petition was filed only seven days before the
`
`one-year time bar, and less than three weeks before the due date for the Patent
`
`Owner’s preliminary response in IPR2019-01357.
`
`As to the fourth General Plastic factor, Petitioner provides no justification
`
`based on the identification of prior art. Petitioner is silent as to when it became aware
`
`of any of its three asserted references. Accordingly, the fourth General Plastic factor
`
`weighs against institution.
`
`For similar reasons, the fifth General Plastic factor weighs against institution.
`
`The Petitioner has failed to disclose when it became aware of the references, and how
`
`long it delayed. Indeed, Petitioner’s delay was almost successful in providing access
`
`to the Petition filed by yet another Petitioner in IPR2020-00115, some two weeks
`
`after filing of the present petition.
`
`As to the finite resources of the Board, there is simply no reason why the
`
`Board’s resources should be applied with respect to an Inter Partes Review, where,
`
`as here, the Petitioner has not identified any manner in which the asserted references
`
`
`
`10
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`IPR2020-00041
`U.S. Patent No. 8,407,609
`
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`differ from the asserted references in a prior petition challenging the same claim; yet
`
`another Petition has been filed asserting different prior art, with no overlap in asserted
`
`references, and where the Petitioner has not identified when it became aware of the
`
`references.
`
`In short, the General Plastic factors weight against institution. This Petition is
`
`redundant, and the Board is respectfully requested to exercise its discretion under 35
`
`U.S.C. 314(a) and 37 C.F.R. 42.108(a) to deny institution.
`
`
`
`
`VIII. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`
`unpatentable”). The Petition should be denied as failing to meet this burden.
`
`The Petition raises the following obviousness challenges:
`
`
`
`Ground
`1
`
`Basis
`35 U.S.C. 103
`
`Claims
`1-3
`
`2
`
`35 U.S.C. 103
`
`1-3
`
`Reference(s)
`Davis (U.S. Patent No. 5,796,952) (EX.
`1003); Choi (U.S. Patent Pub.
`2003/0236905 (EX. 1006)).
`Siler (U.S. Patent Pub. 2004/0133467)
`(EX. 1005); Davis
`
`
`
`
`
`
`
`
`
`11
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`
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`IPR2020-00041
`U.S. Patent No. 8,407,609
`
`
`A. LEVEL OF ORDINARY SKILL IN THE ART
`
`The Petitioner proposes that a person of ordinary skill would have had at least
`
`a B.S. degree in computer engineering, or computer science, or electrical
`
`engineering, or equivalent experience, and at least two years of experience with web
`
`development, including the then-current web technologies such as HTML, XML,
`
`Java and JavaScript. Pet. 14.
`
`The Petitioner’s proposed definition of person of ordinary skill is improper as
`
`lacking an upper bound on the on the level of educational attainment and the time
`
`of work experience of a hypothetical person of ordinary skill.
`
`Patent Owner does not offer a competing definition for POSA at this
`
`preliminary stage, as, even if the Board adopted the Petitioner’s proposed, and
`
`improper, definition, the Petitioner fails to demonstrate a reasonable likelihood that
`
`the challenged claims are unpatentable. Patent Owner reserves the right to propose
`
`its own definition of POSA in the event that trial is instituted.
`
`B. CLAIM CONSTRUCTION
`
`1.
`
`Claim Construction Standard
`
`As of the filing date of the Petition, the standard for claim construction in Inter
`
`Partes Review is the standard of “ordinary and customary meaning of such claim as
`
`understood b
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