`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GOOGLE LLC
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`
`
`IPR2020-00115
`
`PATENT 8,407,609
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`
`TABLE OF CONTENTS
`
`Exhibit List ............................................................................................................... iii
`
`I.
`
`INTRODUCTION .............................................................................................. 1
`
`II. THE ’609 PATENT ........................................................................................... 1
`
`III. PROSECUTION HISTORY OF THE ‘609 PATENT ...................................... 6
`
`IV. RELATED PROCEEDINGS ............................................................................. 9
`
`V. GIVEN THE UPCOMING TRIAL IN PARALLEL LITIGATION, AND
`PARTICULARLY CONSIDERING ANY OF THE OTHER ISSUES
`RAISED HEREIN, THE BOARD SHOULD EXERCISE DISCRETION
`UNDER 35 U.S.C. § 314(A) AND NHK SPRING TO DENY INSTITUTION
` .......................................................................................................................... 10
`
`VI. THE PETITION IMPROPERLY REDUNDANTLY CHALLENGES THE
`CLAIMS AT ISSUE ........................................................................................ 13
`
`VII. 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 . 16
`
`THE PETITION REDUNDANTLY CHALLENGES AT LEAST
`VIII.
`CLAIM 1 OF THE ‘609 PATENT, ALREADY THE SUBJECT OF INTER
`PARTES REVIEW AND A PRIOR PETITION, AND SHOULD BE
`DENIED INSTITUTION UNDER 35 U.S.C. 314 .......................................... 20
`
`IX. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD OF
`UNPATENTABILITY FOR ANY CHALLENGED CLAIM ........................ 23
`
`A. LEVEL OF ORDINARY SKILL IN THE ART ......................................24
`
`B. CLAIM CONSTRUCTION .....................................................................25
`
`1. Claim Construction Standard ............................................................25
`
`
`
`
`i
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`
`C. The Petition fails to establish that Hayward, or Hayward and Middleton,
`teaches a “first computer system” and causing 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.” .............................................................................25
`
`D. Petitioner has failed to establish that Hayward teaches the Claim 1
`recitation “providing an applet to the user’s computer for each digital
`media presentation to be delivered using the first computer system,
`wherein the applet is operative by the user’s computer as a timer”
`(Ground 1) ................................................................................................28
`
`E. Petitioner has failed to establish that a POSA would have had sufficient
`reason to modify Hayward using Middleton to provide the Claim 1
`recitation “providing an applet to the user’s computer for each digital
`media presentation to be delivered using the first computer system,
`wherein the applet is operative by the user’s computer as a timer”
`(Ground 2) ................................................................................................32
`
`F. No Prima Facie Obviousness for Dependent Claims 2 and 3 ..................34
`
`X. CONCLUSION ................................................................................................ 34
`
`CERTIFICATE OF COMPLIANCE .......................................................................... i
`
`CERTIFICATE OF SERVICE ................................................................................. ii
`
`
`
`
`ii
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`
`Exhibit
`
`Description
`
`EXHIBIT LIST
`
`2001
`
`Claim Construction Memorandum and Order, Uniloc 2017 LLC v.
`
`Google LLC, Case 2:18-CV-00502-JRG-RSP (E.D. Tex.), Dkt. 149
`
`(Jan. 20, 2020)
`
`2002
`
`Amended Docket Control Order, Uniloc 2017 LLC v. Google LLC,
`
`No. 2:18-cv-502-JRG-RSP (E.D. Tex.), Dkt. 92 (Oct. 15, 2019)
`
`2003
`
`Google Invalidity Contentions, filed in Dkt. 153-2, Uniloc 2017
`
`LLC v. Google LLC, No. 2:18-cv-502-JRG-RSP (E.D. Tex.) (Jan.
`
`22, 2020)
`
`
`
`
`
`iii
`
`
`
`
`
`
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`
`I.
`
`INTRODUCTION
`
`Uniloc 2017 LLC (the “Uniloc” or “Patent Owner”) submits this Preliminary
`
`Response to Petition IPR2020-00115 for Inter Partes Review (“Pet.” or “Petition”)
`
`of United States Patent No. 8,407,609 (“the ’609 patent” or “Ex. 1001”) filed by
`
`Google LLC. (“Petitioner”). The instant Petition is procedurally and substantively
`
`defective for at least the reasons set forth herein.
`
`II. THE ’609 PATENT
`
`The ’609 patent is titled “System and method for providing and tracking the
`
`provision of audio and visual presentations via a computer network.” The ʼ609 patent
`
`issued March 26, 2013, from U.S. Patent Application No. 12/545,131 filed August
`
`21, 2009, claiming priority to provisional application No. 61/090,672, filed on August
`
`21, 2008.
`
`The inventors of the ’609 patent observed that, because of the virtually
`
`unlimited content available via the Internet, it can prove difficult for a user of an
`
`Internet enabled computer to identify and locate content of interest. Ex. 1001, 1:50-
`
`54. The inventors note that search engines do not always return meaningful results in
`
`response to a query, due to the complex nature and nuances of human language, and
`
`efforts by document authors or providers to fool or trick the indexer into ranking its
`
`documents above those of others. Ex. 1001; 1:55-2:1.
`
`Embodiments of the ‘609 Patent address this challenge by aggregating content,
`
`
`
`
`
`1
`
`
`
`including audio and video content suitable for streaming. Ex. 1001, 3:56-64.
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`
`
`
`As illustrated in Figure 1, a system 10 includes user computers 20, network
`
`server computers 30 and a network 40 interconnecting computers 20, 30 together.
`
`The system 10 also includes personal computing devices 22 and a personal digital
`
`assistant computer/web-enabled cell phone computer 24. Communication links 26
`
`communicatively couple devices 20 and server computers 30 with network 40. Ex.
`
`1001, 3:65-4:19.
`
`Web pages may be provided to user computers 20, personal computing devices
`
`22 and cell phone computer 24 by server computers 30. As shown in Figure 2, a web
`
`
`
`
`
`2
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`page 200 provided by a server computer 30 aggregates audio and/or video content for
`
`presentation to users of computers 20. Ex. 1001, 4:22-27. By user selection of a
`
`presentation on a web page 200, a suitably populated web page 900, shown in Figure
`
`9, may be served to the user’s computer. Portion 930 of the web page 900 may be
`
`used to play back a selected presentation such as by streaming the content to a media
`
`player application or plugin. It may be desirable to reliably identify how long the
`
`media was actually, or may typically, be played, such as to value portions 910, 920
`
`as advertising space. Ex. 1001, 11:59-12:15.
`
`Where content is not uploaded to the computer server or system 30 of the
`
`operator serving web page 900, and is instead remotely provided from another
`
`
`
`
`
`
`
`3
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`computer system, the operator of system 30 does not necessarily exercise control over
`
`the content data storage resource and may not be able to directly track how long
`
`content is streaming to a particular user. Ex. 1001, 12:36-45.
`
`A solution to this challenge of tracking, by a server system, of playback of
`
`content streamed from another resource to a user device is discussed in process 1000,
`
`illustrated in Figure 10 of the ‘609 Patent. The user’s computer receives a web page,
`
`such as from system 30 of Fig. 1, at block 1010. The received web page may take the
`
`form of web page 900 of Figure 9, which includes a portion that may be used to play
`
`back user-selected content on the user’s computer, which content may be provided
`
`by a third party’s computer system. Ex. 1001, 12:56-66.
`
`
`
`
`
`4
`
`
`
`
`
`
` A timer applet on page 900 may be used to indicate when a predetermined
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`temporal period has elapsed. Examples of those temporal periods given in the ‘609
`
`Patent include 10, 15 and 30 seconds. The timer applet may be started at block 1020
`
`of Figure 10. Ex. 1001, 13:4-9. When the timer applet determines that the
`
`predetermined temporal period has elapsed, it signals its continued execution to the
`
`user’s computer system 20. In response, the server system may log receipt of this
`
`indication. In embodiments, the applet may cause identifying data, such as a cookie,
`
`or associated data, to be transmitted from the user’s computer to the server, where the
`
`cookie, or associated data, may be stored logged, such as by using database server
`
`32. Ex. 1001, 13:10-23.
`
`In an example, at each expiration of the predetermined temporal period as
`
`determined by the timer applet, a table entry may be made of the user, the page the
`
`user is on, and to the extent the user is on the same page as was the user upon the last
`
`expiration of the timer, the user’s total time on the same page, using database server
`
`32. Ex. 1001, 13:24-30. In certain embodiments, the timer applet may cause data
`
`indicative of another temporal cycle having passed while the web page presents the
`
`presentation. In that case, a value indicative of the number of cycles that have passed,
`
`stored in database server 32, may be incremented each time the data is received. Ex.
`
`1001, 13:36-42.
`
`Using these embodiments, the capability is provided to know how long a
`
`
`
`
`
`5
`
`
`
`
`particular viewer spent viewing a particular show on a particular page. Ex. 1001,
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`13:43-48.
`
`III. PROSECUTION HISTORY OF THE ‘609 PATENT
`
`The prosecution history of the ‘609 Patent includes substantive examination,
`
`including reliance by the Examiner at the USPTO on one reference to reject as-filed
`
`claims, and inclusion of detailed comments as to three further references by the
`
`Examiner in an Office Action.
`
`In a first Non-Final Office Action, the Examiner rejected all pending claims
`
`under 35 U.S.C. 103 over Cobley (U.S. Patent Pub 2002/0198781). Ex. 1002, p. 69.
`
`The Examiner alleged that Cobley discloses, inter alia, providing identifier data to a
`
`user’s computer system for each digital media presentation system, an applet
`
`operative by the user’s computer as a timer, receiving at least a portion of the
`
`identifier data provided to the user’s computer responsively to the timer applet each
`
`time a predetermined temporal period elapses using the first computer system, and
`
`storing data indicative of received identifier data. Id. at 71.
`
`The Examiner also provided summaries of three references, identified as
`
`pertinent to the disclosure, namely Odom (U.S. Patent No. 6,606,102), Shuster (U.S.
`
`Patent Pub. 2011/0082754) and Gaidemak (U.S. Patent Pub. 2006/0224693). Id. at
`
`72. The Examiner noted that Shuster discloses a tool where, upon entering a website,
`
`the time at which the user enters is determined, and an applet may begin a count down
`
`
`
`
`
`6
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`
`for a predetermined time period. Id
`
`In response, the applicant amended Claim 1 to recite “wherein each stored data
`
`is together indicative of a cumulative time the corresponding web page was displayed
`
`by the user’s computer.” Id. at 103. The accompanying arguments noted that Cobley
`
`failed to each or suggest this recitation, as well as the recitations “receiving at least a
`
`portion of the identifier data from the user’s computer responsively to the timer applet
`
`each time a predetermined temporal period elapses 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 107.
`
`In response, the Examiner issued a Notice of Allowance, and the application
`
`proceeded to grant. Id. at 111-115.
`
` For the convenience of the Board, the text of challenged independent claim 1,
`
`and challenged claims 2 and 3, are reproduced here:
`
`Claim 1 recites:
`
`1.
`
`A method for tracking digital media presentations delivered
`
`from a first computer system to a user’s computer via a network
`
`comprising:
`
`providing a corresponding web page to the user’s computer for
`
`each digital media presentation to be delivered using the first computer
`
`system;
`
`
`
`
`
`7
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`
`providing identifier data to the user’s computer using the first
`
`computer system;
`
`providing an applet to the user’s computer for each digital media
`
`presentation to be delivered using the first computer system, wherein the
`
`applet is operative by the user’s computer as a timer;
`
`receiving at least a portion of the identifier data from the user’s
`
`computer responsively to the timer applet each time a predetermined
`
`temporal period elapses using the first computer system; and
`
`storing data indicative of the received at least portion of the
`
`identifier data using the first computer system;
`
`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;
`
`wherein the stored data is indicative of an amount of time the
`
`digital media presentation data is streamed from the second computer
`
`system to the user’s computer; and
`
`wherein each stored data is together indicative of a cumulative
`
`time the corresponding web page was displayed by the user’s computer.
`
`2. The method of claim 1, wherein the storing comprises
`
`incrementing a stored value dependently upon the receiving.
`
`
`
`
`
`8
`
`
`
`3. The method of claim 2, wherein the received data is indicative
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`
`of a temporal cycle passing.
`
`IV. RELATED PROCEEDINGS
`
`The following proceedings concern the ’609 patent (Ex. 1001).
`
`Case Name
`
`Case Number Court Filing Date
`
`Uniloc 2017 LLC et al v. Google LLC
`
`2-18-cv-00502 TXED 11/17/2018
`
`Uniloc 2017 LLC v. Netflix, Inc.
`
`8-18-cv-02055 CACD 11/17/2018
`
`Uniloc 2017 LLC v. American
`
`8-18-cv-02056 CACD 11/17/2018
`
`Broadcasting Companies, Inc.
`
`Uniloc 2017 LLC v. Vudu, Inc.
`
`1-19-cv-00183 DED
`
`1/30/2019
`
`Uniloc 2017, LLC v. Sling TV, LLC
`
`1-19-cv-00278 COD
`
`1/31/2019
`
`Uniloc 2017 LLC v. Roku, Inc.
`
`8-19-cv-00295 CACD 2/14/2019
`
`Netflix, Inc. et al v. Uniloc 2017 LLC
`
`IPR2020-00041 PTAB 10/18/2019
`
`Sling TV L.L.C. v. Uniloc 2017 LLC
`
`IPR2019-01367 PTAB
`
`7/22/2019
`
`
`
`The district court in the Google -502 case cited above has issued a Claim
`
`Construction Memorandum and Order interpreting terms of the ’609 patent. Ex.
`
`2001.
`
`
`
`
`
`
`
`9
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`V. GIVEN THE UPCOMING TRIAL IN PARALLEL LITIGATION, AND
`PARTICULARLY CONSIDERING ANY OF THE OTHER ISSUES
`RAISED HEREIN, THE BOARD SHOULD EXERCISE DISCRETION
`UNDER 35 U.S.C. § 314(A) AND NHK SPRING TO DENY
`INSTITUTION
`
`Instituting a trial under the facts and circumstances of this case would be an
`
`inefficient use of Board resources. Jury selection is set to begin in the parallel
`
`litigation involving Petitioner on August 17, 2020, which is approximately three
`
`months after the anticipated timing of an institution decision from the Board in this
`
`case, and, therefore, approximately nine months prior to any expected Final Written
`
`Decision in this IPR if trial were instituted. See Uniloc 2017 LLC v. Google LLC,
`
`No. 2:18-cv-502, Dkt. 92 (E.D. Tex.) (Amended Docket Control Order, submitted for
`
`convenience of the Board as Exhibit 2002). The Board’s precedential decision in
`
`NHK Spring Co., Ltd. v. Intri-plex Technologies, IPR2018-00752, Paper No. 8 at 20
`
`(P.T.A.B. Sept. 12, 2018) (precedential) is on point as to discretionary denial under
`
`§ 314(a) based on the status of parallel litigation, and particularly when considered
`
`in combination with any of the number of issues argued in this Response. Denial of
`
`institution on this basis is respectfully requested.
`
`In NHK Spring, expert discovery was set to close on November 1, 2018,
`
`approximately two months from the date of the institution decision of September 12,
`
`2018. NHK Spring, Paper No. 8, 20. Trial was set to begin on March 25, 2019, just
`
`over six months from the date of the institution decision. Id. Thus, the Board noted
`
`
`
`
`
`10
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`that trial before it on the same asserted prior art would not conclude until September
`
`2019, which was six months after the scheduled trial date before the district court.
`
`Id. The Board determined that “[i]nstitution of an inter partes review under these
`
`circumstances would not be consistent with ‘an objective of the AIA . . . to provide
`
`an effective and efficient alternative to district court litigation.’” Id. (quoting General
`
`Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (Paper 19)
`
`(PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)). The Board thus found that the
`
`advanced state of the district court proceeding weighed in favor of denying the
`
`Petition under § 314(a). Id. Although NHK Spring also involved factors under
`
`§ 325(d), NHK Spring does not indicate that the state of district court litigation can
`
`only be considered with other specific factors, rather than as part of a balanced
`
`assessment of all relevant circumstances in the case. See Thermo Fisher Scientific,
`
`Inc. v. Regents of Univ. of Cal., IPR2018-01370, slip op. at 25–27 (Paper 11) (PTAB
`
`Feb. 7, 2019) (determining that “the advanced stage of the pending district court
`
`proceeding, along with the similarities involved in that proceeding and the Petition,
`
`warrant additionally denying the Petition under § 314(a)”).
`
`Here, a decision on institution is not expected until May 2020, which means a
`
`trial before the Board would not conclude until May 2021. Jury selection at the start
`
`of trial before the district court is set for August 17, 2020, which is only three months
`
`after an anticipated decision on institution and nine months prior to conclusion of trial
`
`
`
`
`
`11
`
`
`
`
`before the Board if one were instituted, weighing even more in favor of denial of
`
`institution than in NHK Spring. Google could have, but failed to, address this
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`circumstance in its petition.
`
`As in NHK Spring, the same grounds proposed in the Petition as to independent
`
`claim 1 are included in Petitioner’s invalidity contentions in the district court.
`
`Google’s invalidity contentions in the district court case include assertions of
`
`invalidity of anticipation by Hayward and obviousness over Hayward and Middleton,
`
`as in Google’s Petition in this IPR. Compare Pet. 24, with Ex. 2003, at 14–15, 18
`
`(Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-502, Dkt. 153-2 (E.D. Tex.).1
`
`Google’s invalidity contentions also include reference to Ryan, though not explicitly
`
`in combination with Hayward and Middleton as presented in the instant Petition for
`
`dependent claims 2 and 3. See Ex. 2003, at 8, 37–38, 45–46, 51–53 (alleging
`
`combination of Siler, Middleton, and Ryan). Such minor variation of a secondary
`
`reference as applied to dependent claims should not allow Google to escape the
`
`consequences of its delay in filing this Petition.
`
`Expert discovery in the district court will close May 11, 2020, which is one
`
`day after the last date to issue a decision on institution in this proceeding. Ex. 2002,
`
`
`1 Although Uniloc has moved to strike Google’s invalidity contentions, see id., Dkt.
`
`153, the district court has not yet ruled on Uniloc’s motion.
`
`
`
`
`
`12
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`3. The district court has also already construed the claims. See Ex. 2001.2 Google’s
`
`decision to wait almost one year from the filing of the current infringement lawsuit
`
`to file its Petition has directly and foreseeably resulted in the district court proceeding
`
`reaching this advanced stage relative to this proceeding. As in NHK Spring,
`
`“[i]nstitution of an inter partes review under these circumstances would not be
`
`consistent with ‘an objective of the AIA . . . to provide an effective and efficient
`
`alternative to district court litigation.’” NHK Spring, Paper No. 8, 20. Patent Owner,
`
`therefore, requests that the Board exercise its discretion not to institute trial under the
`
`circumstances of this case.
`
`VI. THE PETITION IMPROPERLY REDUNDANTLY CHALLENGES
`THE CLAIMS AT ISSUE
`
`The Petition redundantly challenges claim 1 of the ’609 Patent on two different
`
`grounds, without providing any alleged justification for such inefficient redundancies.
`
`As the Board has previously explained, “multiple grounds, which are presented
`
`in a redundant manner by a petitioner who makes no meaningful distinction between
`
`them, are contrary to the regulatory and statutory mandates, and therefore are not all
`
`
`2 In light of the revised standard for claim construction in IPR proceedings, the
`
`district court construed the claims applying the same claim construction
`
`standard as the Board.
`
`
`
`
`
`13
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`entitled to consideration.” See Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., No.
`
`CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012). Such redundancies place a
`
`significant burden on both the Board and the patent owner, causing unnecessary
`
`delay, compounding costs to all parties involved, and compromising the ability to
`
`complete review within the statutory deadline. Id.; 3 7 C.F.R. § 42.1(b); see also 37
`
`C.F.R. § 42.108.
`
`The Petition presents grounds that are horizontally redundant with respect to
`
`each other. Horizontal redundancy “involves a plurality of prior art applied not in
`
`combination to complement each other but as distinct and separate alternatives.”
`
`Liberty Mut., CBM2012-00003, Paper 7 at 3. In such instances where reliance on
`
`distinct and separate alternatives is alleged to sufficiently present a prima facie case
`
`of invalidity, such reliance fails where “the associated arguments do not explain why
`
`one reference more closely satisfies the claim limitation at issue in some respects than
`
`another reference, and vice versa.” Id. (emphasis in original). “Because the
`
`references are not identical, each reference has to be better in some respect or else the
`
`references are collectively horizontally redundant.” Id.
`
`As the Board explained, the Petitioner in Liberty Mutual did “not articulate any
`
`relative weakness in any respect for any one of the …references.” Liberty Mut.,
`
`CBM2012-00003, Paper 7 at 6. Further, the Petitioner in Liberty Mutual did not
`
`“articulate any relative strength in any respect for any one of the… references.” Id.
`
`
`
`
`
`14
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`Here, Petitioner similarly makes no effort to justify its horizontally redundant theories
`
`by explaining the relative strength and relative weakness of the alternative grounds,
`
`one of which relies on Hayward alone as an allegedly anticipating reference, and one
`
`of which relies on the combination of Hayward and Middleton as allegedly rendering
`
`claim 1 unpatentable for obviousness. Whether one of the alternative grounds is better
`
`from all perspectives, or if there is no difference in the grounds, the Petitioner should
`
`only assert one of the grounds. Id. at 12. “Only if the Petitioner reasonably articulates
`
`why each ground has strength and weakness relative to the other should both grounds
`
`be asserted for consideration.” Id. (emphasis added). Here, Ground 1 and Ground 2
`
`differ in both the statutory grounds and the arrangement of references. However,
`
`Petitioner does not even acknowledge that one ground is better or that there are any
`
`strengths and weaknesses of one ground over the other. Instead, while the Petition
`
`concedes that Hayward may not define “scripting” to include an applet, Pet. 46, which
`
`would evidently render Ground 1 deficient, the Petition fails to indicate whether
`
`Ground 1 or Ground 2 is the stronger of the two grounds.
`
`The Board in Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B.
`
`July 23, 2014), flatly rejected a similar attempt to hedge bets and unnecessarily
`
`multiply the work of both the Board and the Patent Owner. The Board there found
`
`insufficient the petitioner’s “conclusory assertion” that “[t]o the extent [the first prior
`
`art reference] may not explicitly teach” the limitation, the second prior art reference
`
`
`
`
`
`15
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`“explicitly teaches this limitation.” The Board explained that “such an assertion fails
`
`to resolve the exact differences sought to be derived from” the second prior art
`
`reference. Id. Here, the Petitioner has not even provided such a conclusory assertion.
`
`Although the Board cannot institute only on some grounds, “even when a
`
`petitioner demonstrates a reasonable likelihood of prevailing with respect to one or
`
`more claims, institution of review remains discretionary.” SAS Inst. Inc. v. Iancu,
`
`138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion
`
`on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc.
`
`v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted,
`
`but never compelled, to institute an IPR proceeding.”). Thus, the Board should
`
`consider, at most, only one of the two redundant asserted grounds, and if that one
`
`considered ground is found not to merit institution (as neither of the two deficient
`
`grounds here should), the Board is under no obligation to consider the second ground,
`
`but can, and should, simply deny institution without expending resources on the
`
`second redundant ground.
`
`VII. 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
`
`It is clear under the applicable standards of Becton, Dickinson and Co. v. B.
`
`Braun Melsungen AG, IPR2017-01586, Paper No. 8 (2017), that the Board should
`
`
`
`
`
`16
`
`
`
`
`decline to exercise its discretion to institute Inter Partes Review based on the prior
`
`art relied upon in the Petition. The Board stated in Becton, Dickinson that:
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`In evaluating whether to exercise our discretion when the same or
`
`substantially the same prior art or arguments previously were presented
`
`to the Office under section 325(d), we have weighed some common non-
`
`exclusive factors, such as: (a) the similarities and material differences
`
`between the asserted art and the prior art involved during examination;
`
`(b) the cumulative nature of the asserted art and the prior art evaluated
`
`during examination; (c) the extent to which the asserted art was
`
`evaluated during examination, including whether the prior art was the
`
`basis for rejection; (d) the extent of the overlap between the arguments
`
`made during examination and the manner in which Petitioner relies on
`
`the prior art or Patent Owner distinguishes the prior art; (e) whether
`
`Petitioner has pointed out sufficiently how the Examiner erred in its
`
`evaluation of the asserted prior art; and (f) the extent to which additional
`
`evidence and facts presented in the Petition warrant reconsideration of
`
`the prior art or arguments.”
`
`Id. at 17-18 (emphasis in original).
`
`The Petition fails to provide an analysis as to why the present prior art is not
`
`cumulative under Becton Dickinson. The Petition provides no analysis as to why the
`
`prior art asserted is not cumulative of any of the references either relied upon by the
`
`Examiner during prosecution in a claim rejection, or discussed by the Examiner in
`
`detail in an Office Action. As to Hayward, the Petition merely states, in conclusory
`
`
`
`
`
`17
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`fashion, that Hayward was not cited or considered during prosecution of the ‘609
`
`Patent. Pet. 2. Similarly, the Petition states in conclusory fashion that each of
`
`Middleton and Ryan was not cited or considered during prosecution of the ‘609
`
`Patent. Pet. 9, 12. Indeed, the Petition is devoid of any analysis of any alleged
`
`differences between any of the four references either relied upon or discussed by the
`
`Examiner in detail, namely Cobley, Odom, Shuster, and Gaidemak, on the one hand,
`
`and the Hayward, Middleton and Ryan references asserted in the Petition, on the
`
`other.
`
`As to the first factor, the similarities and material differences between the
`
`asserted art and the prior art asserted during examination, Petitioners provide nothing
`
`but a conclusory statement that the three references asserted in the Petition were not
`
`cited or considered during examination, without specifically alleging that any of the
`
`three references asserted in the Petition include teachings not provided in any of the
`
`references relied upon by the Examiner, or substantively discussed by the Examiner,
`
`during prosecution. Indeed, Petitioners rely on both Hayward and Middleton for
`
`allegedly teaching an applet that provides data indicative of a time period that a
`
`presentation is streamed, but, during prosecution, the Examiner stated:
`
`Cobley teaches that a timing applet is embedded in a page that has
`
`a first frame in which the timing applet is embedded and a second frame
`
`into which the media is pulled. When the page remains loaded for the
`
`
`
`
`
`18
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`
`timing period of the applet, the timing applet sends a message to the
`
`server…
`
`Ex. 1002, 70. Thus, as Cobley is alleged to teach a timing applet that sends a message
`
`to a server indicative of a time that a web page remains loaded or displayed on a client
`
`computer, Hayward (as interpreted by Petitioner) and Middleton are cumulative of
`
`Cobley, and Petitioner provides no evidence to rebut this conclusion.
`
`Similarly, the Examiner stated that Shuster (U.S. Patent Pub. 2011/0082754)
`
`discloses a tool where, upon entering a website, the time at which the user enters is
`
`determined, and an applet may begin a count down for a predetermined time period.
`
`Ex. 1002, 72. The alleged timing applets of Hayward and Middleton are thus further
`
`cumulative of Shuster.
`
`As to the second factor, the cumulative nature of the art cited during
`
`examination and the asserted art, the Petition provides no indication of any
`
`differences between Cobley, Odom, Shuster and Gaidemak, on the one hand, and the
`
`asserted art on the other. Indeed, Petitioner is completely silent as to any mention of
`
`Cobley, Shuster, or any of the other references considered by the Examiner in detail
`
`during prosecution. Further, as demonstrated above, both Hayward and Middleton
`
`are cumulative in relevant part of both Cobley and Shuster.
`
`As to the third factor, the extent to which the asserted art was considered by
`
`the Examiner, in fact, the Cobley reference was relied upon for a rejection, and the
`
`
`
`
`
`19
`
`
`
`IPR2020-00115
`U.S. Patent No. 8,407,609
`
`
`Odom, Shuster and Gaidemak references were substantively discussed in an Office
`
`Action, and thus were all substantively considered by the Examiner. Moreover,
`
`Petitioner has provided no basis for concluding that any of the newly-presented
`
`asserted art is not cumulative of the four references substantively discussed by the
`
`Examiner during prosecution. Given these numerous factors militating against
`
`institution, the Board is respectfully requested to exercise its discretion to deny
`
`institution here.
`
`VIII. THE PETITION REDUNDANTLY CHALLENGES AT LEAST
`CLAIM 1 OF THE ‘609 PATENT, ALREADY THE SUBJECT OF
`INTER PARTES REVIEW AND A PRIOR PETITION, AND SHOULD
`BE DENIED INSTITUTION UNDER 35 U.S.C. 314
`
`The present Petition, the Petition in IPR2019-01367, and the Petition in
`
`IPR2020-00041, all challenge Claims 1–3 of the ‘609 Patent. This redundant
`
`challenge should be denie
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
