`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
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`Petitioner
`
`v.
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`LBT IP I LLC,
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`Patent Owner
`____________
`
`Case IPR2020-01189
`U.S. Patent No. 8,497,774
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PAT. NO. 8,497,774
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`
`B.
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`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ...................................................................................III
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`PETITIONER HAS NOT MET ITS BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD OF SUCCESS THAT ANY OF THE
`CHALLENGED CLAIMS ARE OBVIOUS. ................................................. 4
`A.
`Petitioner’s Proposed Combinations of References are Improper. ....... 4
`i.
`Petitioner’s Proposed Combinations Impermissibly Add
`an Element or Functionality Already Present in
`Sakamoto. ......................................................................... 6
`Even Under Petitioner’s Proposed Combinations, It Has Failed To
`Show That The Prior Art Discloses All Limitations. ............................ 8
`i.
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 1(e) “Local Battery Power
`Adjustment Mechanism to Generate in Substantially
`Real-Time an Updated Set of Network Communication
`Signaling Protocols Associated with at least one of a
`Request Rate of Location Coordinate Packets to be
`Communicated to a Target Host and a Listen Rate of the
`Location Coordinate Packets From a Satellite Navigation
`System, the Updated Set of Network Communication
`Signaling Protocols Having a Value That is Responsive
`to a User Input Request”. .................................................. 8
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 8(c) “an Electrical Power Resource
`Management Component to Adjust Cycle Timing of at
`Least one of a Request Rate of Location Coordinate
`Packets to a Target Host and a Listen Rate of the
`Location Coordinate Packets Responsive to an Estimated
`Charge Level of the Charging Unit”. .............................13
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 8(d) “Wherein the Battery Power
`
`ii.
`
`iii.
`
`
`
`i
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`
`Level Monitor Measures a Power Level of the Charging
`Unit and Adjusts a Power Level Applied to Location
`Tracking Circuitry Responsive to One or More Signal
`Levels, the Power Level Comprising a Multitude of
`Threshold Values Determined by a User or System
`Administrator to Intermittently Activate or Deactivate the
`Location Tracking Circuitry to Conserve Power of the
`Charging Unit in Response to the Estimated Charge
`Level of the Charging Unit”. ..........................................15
`III. CONCLUSION ..............................................................................................18
`
`
`
`
`
`ii
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`
`TABLE OF AUTHORITIES
`
`Cases
`
`KSR Int’l Co. v. Teleflex, Inc.,
`
`550 U.S. 398 (2007)......................................................................................... 5
`
`Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
`
`566 F.3d 989 (Fed. Cir. 2009) ......................................................................... 5
`
`Board Decisions
`
`Apotex Inc. v. Wyeth LLC,
`
`IPR2014-00115, Paper 94 (PTAB Apr. 20, 2015) .......................................... 5
`
`TRW Automotive U.S. LLC v. Magna Electronics, Inc.,
`
`IPR2015-00951, Paper 8 (PTAB Sept. 17, 2015) ........................................... 5
`
`Stryker Corp. v. Karl Storz Endoscopy America, Inc.,
`
`IPR2015-00764, Paper 13 (PTAB Sept. 2, 2015) ........................................... 5
`
`Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
`
`IPR2015-00276, Paper 8 (PTAB Jun. 1, 2015) ............................................... 5
`
`
`
`
`
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`
`iii
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`Case IPR2020-01189
`U.S. Patent No. 8,497,774
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`
`The Petitioner has not demonstrated a reasonable likelihood of success in its
`
`argument that any of the challenged claims of U.S. Patent No. 8,497,774 (“the ’774
`
`Patent”) are invalid as obvious because (i) the Petitioner’s proposed combinations
`
`of references are improper, and (ii) even if the Petitioner’s proposed combinations
`
`of references were proper, the references on which it relies nonetheless fail to
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`disclose required limitations from the challenged claims. Because the Petitioner has
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`not met its burden, its request for institution of an inter partes review (“IPR”) should
`
`be denied.
`
`I.
`
`INTRODUCTION
`
`The ’774 Patent describes an electronic tracking device that includes a battery
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`power monitor, a charging unit, and an electrical power resource management
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`component. Ex. 1001, Abstract. The electrical power resource management
`
`component adjusts cycle timing of one or more of control parameters for the tracking
`
`device and the control parameters include request rate of location coordinate packets
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`to a target host and a listen rate of the location coordinate packets. Id.
`
`Independent claim 1 recites, in part:
`
`local battery power adjustment mechanism to generate in substantially
`
`real-time an updated set of network communication signaling protocols
`
`associated with at least one of a request rate of location coordinate
`
`packets to be communicated to a target host and a listen rate of the
`
`
`
`1
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`location coordinate packets from a satellite navigation system, the
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`updated set of network communication signaling protocols having a
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`value that is responsive to a user input request;
`
`Id., Claim 1.
`
`Independent claim 8 recites, in part:
`
`an electrical power resource management component to adjust cycle
`
`timing of at least one or a request rate of location coordinate packets to
`
`a target host and a listen rate of the location coordinate packets
`
`responsive to an estimated charge level of the charging unit,
`
`wherein the battery power level monitor measures a power level of the
`
`charging unit and adjusts a power level applied to location tracking
`
`circuitry responsive to one or more signal levels, the power level
`
`comprising a multitude of threshold values determined by a user or
`
`system administrator to intermittently activate or deactivate the location
`
`tracking circuitry to conserve power of the charging unit in response to
`
`the estimated charge level of the charging unit.
`
`Id., Claim 8.
`
`Thus, independent claims 1 and 8 each recites, in part, updating or adjusting
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`“at least one of a request rate of location coordinate packets to be communicated to
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`a target host and a listen rate of the location coordinate packets from a satellite
`
`
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`2
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`navigation system.” In addition, independent claim 8 recites adjusting “a power
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`level” that includes “a multitude of threshold values determined by a user or system
`
`administrator.”
`
`The ’774 Patent discloses:
`
`In one embodiment, local battery power adjustment mechanism 416
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`generates
`
`in substantially
`
`real-time updated set of network
`
`communication protocols. In one variant, updated set of network
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`communication signaling protocols communicated, for instance,
`
`includes an update rate (e.g., refresh rate) of location coordinate packets
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`446. In one example, update rate of location coordinate packets 446
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`includes request rate 420 of location coordinate packets 422 by target
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`host 452 (e.g., a computer server) and/or listen rate 425 of location
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`coordinate packets 422 by portable electronic tracking device 402.
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` Id., 11:31-41. Thus, the ’774 Patent clearly discloses adjusting a rate at which
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`location coordinate packets are either received or transferred.
`
`The ’774 Patent also discloses:
`
`In yet another advantage, the present invention power charging monitor
`
`(e.g., battery level monitor 116) measures a power level (e.g., battery
`
`power level 406) of power charging unit (e.g., battery 118) and adjusts
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`a power level (e.g., battery power level 406) applied to, for example,
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`3
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`location tracking circuitry (e.g., location tracking circuitry 114) or
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`transceiver 102 responsive to one or more signal levels. In contrast to
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`previous manufacturer tracking device power level settings, the present
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`invention has the capability of power level (e.g., battery power level
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`406) adjustments include multitude of threshold values (see active
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`display 432 of FIG. 4) that is determined by user or system
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`administrator to intermittently activate or deactivate location tracking
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`circuitry (e.g., location tracking circuitry 1140) to conserve power of
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`the power charging unit (e.g., battery 118) responsive to estimated
`
`charge level (e.g., battery charge level 406).
`
`Id., 13:52-67. Thus, the ’774 Patent clearly discloses the distinguishing feature of
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`power level adjustments based on a multitude of threshold values.
`
`II.
`
`PETITIONER HAS NOT MET ITS BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD OF SUCCESS THAT ANY OF
`THE CHALLENGED CLAIMS ARE OBVIOUS.
`
`Because Petitioner relies on improper proposed combinations of references,
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`
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`and because the references relied upon by Petition do not disclose required
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`limitations from those claims, the petition must be denied.
`
`A.
`
`Petitioner’s Proposed Combinations of References are
`Improper.
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`
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`4
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`The Petitioner bears the burden of proof for showing that a proposed
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`combination is proper. “An invention ‘composed of several elements is not proved
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`obvious merely by demonstrating that each of its elements was, independently,
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`known in the prior art.’” Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
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`IPR2015-00276, Paper 8, slip op. at 10 (PTAB Jun. 1, 2015) (quoting KSR Int’l Co.
`
`v. Teleflex, Inc., 550 U.S. 398, 418 (2007). “A party that petitions the Board for a
`
`determination of obviousness must show that ‘a skilled artisan would have been
`
`motivated to combine the teachings of the prior art references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation of
`
`success in doing so.’” Apotex Inc. v. Wyeth LLC, IPR2014-00115, Paper 94, slip op.
`
`at 11 (Apr. 20, 2015) (quoting Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
`
`566 F.3d 989, 994 (Fed. Cir. 2009)).
`
`The Petitioner must show that a proposed combination does not impermissibly
`
`add an element or functionality already present in the primary reference. See TRW
`
`Automotive U.S. LLC v. Magna Electronics, Inc., IPR2015-00972, Paper 9, slip op.
`
`at 15, 17 (September 16, 2015) (finding no reason to combine where “the camera in
`
`[the ‘094 patent] already is mounted to the windshield using a bracket and does not
`
`require the direct optical coupling provided by the fastening device in [the ‘633
`
`patent]”). See also Stryker Corp. v. Karl Storz Endoscopy America, Inc., IPR2015-
`
`00764, Paper 13, slip op. at 13 (September 2, 2015) (“[W]e fail to see, and Petitioner
`
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`5
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`does not adequately explain, why it would be obvious to add a translator to
`
`redundantly perform the function that Petitioner maintains is performed by the
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`interconnect devices and network computer located within the surgical network.”).
`
`i.
`
`Petitioner’s Proposed Combinations Impermissibly
`Add an Element or Functionality Already Present in
`Sakamoto.
`
`The Petitioner’s primary reference is the Certified English Translation of
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`Japanese Unexamined Patent Application Publication No. JP 2004-37116A to
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`Sakamoto (“Sakamoto”) (Ex. 1004). Sakamoto is directed to a GPS system
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`including a portable terminal having a GPS receiver for determining a position of
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`the terminal, and a remote server to which the position information can be
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`transmitted. Ex. 1004, Abstract, [0018], [0030-0031].
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`The Petitioner relies on purported Applicant Admitted Prior Art (AAPA) as a
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`secondary reference under Ground 2. In particular, the Petitioner asserts “the ’774
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`Patent admits that estimating or predicting a remaining battery charge life can be
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`done by ‘standard techniques’.” Paper 1, 55 (citing Ex. 1001, 11:23-30).
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`However, the Petitioner also asserts:
`
`Sakamoto teaches a battery power monitor to measure in real-time the
`
`battery charge level as claimed. Sakamoto’s battery control unit 16
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`“constantly monitors the remaining battery level” (i.e., the battery
`
`charge level). Sakamoto, [0028]. Sakamoto determines a “low”
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`remaining battery level by comparing the monitored level to a
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`predetermined threshold. Sakamoto, [0028]; [0039]. A POSITA would
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`have understood that in order for Sakamoto’s battery control unit to
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`“monitor[]” the remaining battery level, it repeatedly measures the
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`battery level in order to compare the measured value to the
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`predetermined threshold. Dec., 85-86. Thus, Sakamoto’s battery
`
`control unit “measures … the battery charge level.”
`
`Paper 1, 23-24. Thus, the Petitioner asserts that both Sakamoto and AAPA disclose
`
`the same functionality. As such, it would not have been obvious to modify Sakamoto
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`with the redundant functionality of AAPA as proposed by the Petitioner.
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`The Petitioner relies on U.S. Patent No. 5,845,142 to Hayasaka (“Hayasaka”)
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`(Ex. 1011) as a secondary reference under Ground 3. In particular, the Petitioner
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`asserts “Sakamoto teaches a ‘a battery power monitor to measure in real-time the
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`battery charge level”, but the Petitioner also asserts “Hayasaka teaches estimating a
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`both a remaining battery charge level and a remaining battery charge life.” Paper 1,
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`61. Thus, the Petitioner, in similar fashion to Ground 2, asserts that Sakamoto and
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`Hayasaka disclose the same functionality. As such, it would not have been obvious
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`to modify Sakamoto with the redundant functionality of Hayasaka as proposed by
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`the Petitioner.
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`7
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`B.
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`Even Under Petitioner’s Proposed Combinations, It Has
`Failed To Show That The Prior Art Discloses All Limitations.
`
`Even if the Petitioner’s proposed combinations are proper, the Petitioner has
`
`still failed to show that the prior art on which it relies discloses all of the limitations
`
`of the challenged claims.
`
`i.
`
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 1(e) “Local Battery Power
`Adjustment Mechanism to Generate in Substantially
`Real-Time an Updated Set of Network Communication
`Signaling Protocols Associated with at least one of a
`Request Rate of Location Coordinate Packets to be
`Communicated to a Target Host and a Listen Rate of
`the Location Coordinate Packets From a Satellite
`Navigation System, the Updated Set of Network
`Communication Signaling Protocols Having a Value
`That is Responsive to a User Input Request”.
`
`The Petitioner has failed to meet its burden of showing a reasonable likelihood
`
`that the prior art on which it relies discloses the limitation “local battery power
`
`adjustment mechanism to generate in substantially real-time an updated set of
`
`network communication signaling protocols associated with at least one of a request
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`rate of location coordinate packets to be communicated to a target host and a listen
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`rate of the location coordinate packets from a satellite navigation system, the updated
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`set of network communication signaling protocols having a value that is responsive
`
`to a user input request.” This limitation is recited in independent claim 1.
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`
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`8
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`The Petitioner relies on Sakamoto as disclosing this limitation. Sakamoto is
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`directed to a GPS system including a portable terminal having a GPS receiver for
`
`determining a position of the terminal, and a remote server to which the position
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`information can be transmitted. Ex. 1004, Abstract, [0018], [0030-0031]. In
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`particular, Sakamoto explicitly discloses:
`
`When the positioning mode control unit 22 determines that the high
`
`sensitivity positioning mode is required when the signal level value
`
`is equal to or lower than a predetermined threshold value, …; if it
`
`is determined that the normal sensitivity positioning mode is
`
`required when the signal level value is equal to or higher than a
`
`predetermined threshold value, …. If it is determined that the
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`positioning cannot be performed when the signal level value is
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`equal to or lower than a predetermined threshold value, the
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`position search may be stopped.
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`Id., [0038] (emphasis added). Thus, Sakamoto discloses a “normal sensitivity
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`positioning mode,” a “high sensitivity positioning mode,” and a mode in which
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`“position search may be stopped” when “positioning cannot be performed.”
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`Furthermore, Sakamoto explicitly discloses two predetermined threshold values: a)
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`a threshold value between the normal mode and the high sensitivity mode; and b) a
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`threshold value for when to stop performing positioning.
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`9
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`Sakamoto further discloses:
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`…a series of positioning operations in which the power is turned on by
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`the position request from the power-off state and the positioning is
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`successful and then the power is turned off again is set to the normal
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`sensitivity positioning mode.
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`…the series of positioning operations for constantly operating the GPS
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`receiver 10 is referred to as the “high sensitivity positioning mode.”
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`Id., [0024]-[0025].
`
`In context, Sakamoto discloses that a) the GPS receiver intermittently operates
`
`when a signal level exceeds a first threshold, b) the GPS receiver constantly operates
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`when the signal level does not exceed the first threshold, and c) the GPS receiver
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`stops operating when the signal level falls below a second threshold. Stated another
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`way, Sakamoto teaches that a GPS receiver operates normally when a signal level is
`
`normal, the GPS receiver works harder when the signal level is less than normal, and
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`the GPS receiver stops working when the signal level is such that the GPS receiver
`
`cannot perform GPS positioning.
`
`As discussed above in Section I, the ’774 Patent clearly discloses adjusting a
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`rate at which location coordinate packets are either received or transferred and refers
`
`to such rate as, for example, “a refresh rate.” The ’774 Patent further discloses:
`
`
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`10
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`In response to receipt of updated set of network communication
`
`signaling protocols, portable location tracking device 402 adjusts
`
`settings (an internal time schedule) and acknowledges receipt of the
`
`message to target host 452. Portable location tracking device 402
`
`checks internal time schedule to determine if it should listen for
`
`(perform a location lookup of) location coordinates 422 from satellite
`
`navigation system 403 or an adjacent portable location coordinate
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`tracking device …. Portable location tracking device 402 obtains
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`location coordinates 422 and stores, for instance, in one or more internal
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`breadcrumb memory location(s). Based on the internal time schedule,
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`portable location tracking device 402 determines whether to transmit
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`contents of the one or more breadcrumb memory location(s) to target
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`host 452.
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`Ex. 1001, 12:1-18. As such, the request rate of location coordinate packets to be
`
`communicated to a target host and the listen rate of the location coordinate packets
`
`from a satellite navigation system represent a schedule for when repeating
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`activity(ies) occur.
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`The ’774 Patent further discloses three practical examples. In one, a lost dog
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`has a portable tracking device and a user updates a set of network communication
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`protocols such that “the high setting corresponds to 15 minute intervals for location
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`11
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`and 15 minute intervals for transmission to target host, e.g., server.” Id., 14:4-7. In
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`a second example, “a teenager borrows a parent’s car having portable location
`
`tracking device 402” and a user updates a set of network communication protocols
`
`such that “the medium setting corresponds to 15 minute intervals for location and 60
`
`minute intervals for transmission to the target host, e.g., server.” Id., 14:16-25. In
`
`a third example, “a provider of construction equipment having portable tracking
`
`device 402 rents the equipment to contractors” and a user updates a set of network
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`communication protocols such that “the low setting corresponds to 1440 minute
`
`intervals (24 hours) for location coordinates and 1440 minute intervals (24 hours)
`
`for transmission to the target host, e.g., server.” Id., 14:39-47. As such, this
`
`limitation is directed to updating a schedule of repeating events.
`
`Sakamoto does not disclose a schedule of repeating events or any updating of
`
`such schedule. While Sakamoto’s normal sensitivity positioning mode may involve
`
`repeatedly turning a GPS receiver on or off, Sakamoto explicitly discloses “in order
`
`to obtain terminal user A’s own position; a position request is sent to the positioning
`
`control unit 13 by pressing the button provided on the man-machine interface control
`
`unit 14.” Ex. 1004, [0020]. Thus, Sakamoto’s normal sensitivity positioning mode
`
`is a manual mode. Similarly, Sakamoto discloses:
`
`… Therefore, once the positioning is successful, if the GPS receiver 10
`
`continues to operate without being cut off, at the next position request,
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`
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`12
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`even if the signal level from the GPS satellite is lower than that at the
`
`time of the first positioning, the positioning can be successful. In this
`
`way, the series of positioning operations for constantly operating the
`
`GPS receiver 10 is referred to as the “high sensitivity positioning
`
`mode.”
`
`Id., [0025]. That is, the high sensitivity mode is a continuous mode. Neither of these
`
`modes are based on a schedule and Sakamoto does not disclose any schedule or any
`
`updating of a schedule. The only other mode of Sakamoto is that of position search
`
`stopped, which is also not based on a schedule.
`
`For at least this reason, the Petitioner has failed to meet its burden of showing
`
`a reasonable likelihood that the prior art on which it relies discloses this limitation
`
`as recited in independent claim 1. Dependent claims 4-6 also incorporate this
`
`limitation. As such, the Petitioner’s request for institution of an IPR should be
`
`denied at least for claims 1 and 4-6 under all grounds of unpatentability.
`
`ii.
`
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 8(c) “an Electrical Power Resource
`Management Component to Adjust Cycle Timing of at
`Least one of a Request Rate of Location Coordinate
`Packets to a Target Host and a Listen Rate of the
`Location Coordinate Packets Responsive to an
`Estimated Charge Level of the Charging Unit.”
`
`Petitioner has also failed to meet its burden of showing a reasonable likelihood
`
`that the prior art on which it relies discloses the limitation “an electrical power
`
`
`
`13
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`resource management component to adjust cycle timing of at least one of a request
`
`rate of location coordinate packets to a target host and a listen rate of the location
`
`coordinate packets responsive to an estimated charge level of the charging unit.”
`
`This limitation is recited in independent claim 8.
`
`The Petitioner relies on Sakamoto as disclosing this limitation with a rationale
`
`similar to that asserted in relation to limitation 1(e). In particular, the Petitioner
`
`asserts:
`
`Sakamoto’s electrical resource management component adjusts the
`
`cycle timing of the request rate and/or listen rate when it generates an
`
`updated set of communication signaling protocols associated with the
`
`request rate and listen rate. See § C.6.c) above; Dec., 98 (opining that
`
`each communication signaling protocol has a different cycle rate and
`
`that generating an updated set of communication signaling protocols
`
`adjusts the cycle timing of the listen rate).
`
`Paper 1, 46-47.
`
`However, as discussed above in relation to limitation 1(e), Sakamoto does not
`
`disclose a schedule of repeating events or any updating of such schedule. To the
`
`contrary, Sakamoto explicitly discloses a “normal sensitivity positioning mode” that
`
`responds to manual requests, a “high sensitivity positioning mode” that continuously
`
`performs positioning, and a stop positioning mode. Again, none of these modes are
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`14
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`based on a schedule and Sakamoto does not disclose any schedule or any updating
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`of a schedule.
`
`For at least this reason, the Petitioner has failed to meet its burden of showing
`
`a reasonable likelihood that the prior art on which it relies discloses this limitation
`
`as recited in independent claim 8. Dependent claims 10, 13, and 15 also incorporate
`
`this limitation. As such, the Petitioner’s request for institution of an IPR should be
`
`denied at least for claims 8, 10, 13, and 15 under all grounds of unpatentability.
`
`iii. The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 8(d) “Wherein the Battery Power
`Level Monitor Measures a Power Level of the
`Charging Unit and Adjusts a Power Level Applied to
`Location Tracking Circuitry Responsive to One or
`More Signal Levels, the Power Level Comprising a
`Multitude of Threshold Values Determined by a User
`or System Administrator to Intermittently Activate or
`Deactivate
`the Location Tracking Circuitry
`to
`Conserve Power of the Charging Unit in Response to
`the Estimated Charge Level of the Charging Unit.”
`
`Petitioner has also failed to meet its burden of showing a reasonable likelihood
`
`that the prior art on which it relies discloses the limitation “wherein the battery power
`
`level monitor measures a power level of the charging unit and adjusts a power level
`
`applied to location tracking circuitry responsive to one or more signal levels, the
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`power level comprising a multitude of threshold values determined by a user or
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`system administrator to intermittently activate or deactivate the location tracking
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`15
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`circuitry to conserve power of the charging unit in response to the estimated charge
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`level of the charging unit.” This limitation is recited in independent claim 8.
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`The Petitioner relies on Sakamoto as disclosing this limitation. More
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`specifically, in relation to “the power level comprising a multitude of threshold
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`values determined by a user or system administrator,” the Petitioner asserts:
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`Sakamoto discloses that the remaining battery amount (power level of
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`the charging unit) has two thresholds against which it is compared to
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`determine the positioning mode. Sakamoto discloses that, when the
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`battery power falls below a first, user-defined threshold, the
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`positioning mode switches from high sensitivity positioning mode to
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`normal sensitivity mode, thereby causing the GPS receiver to be
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`intermittently activated (as claimed), as opposed to the continuous
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`activation of high sensitivity positioning mode. Sakamoto, [0029].
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` Paper 1, 50. That is, the Petitioner acknowledges that Sakamoto only discloses two
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`thresholds and three operating modes.
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`The Petitioner, however, does not explicitly address the claim term
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`“multitude” or the phrase “multitude of threshold values.” Rather, the Petitioner
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`appears to assert that Sakamoto’s two thresholds are sufficient to form a multitude.
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`A definition for multitude is “a great number.” dictionary.com (Dec. 9, 2020, 6:32
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`PM), https://dictionary.com/browse/multitude?s=1. That definition is consistent
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`16
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`with the ’774 Patent, which identifies a “multitude of threshold values” by referring
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`to “active display 432 of Fig. 4,” which includes between five and seven thresholds,
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`depending on whether one includes the endpoints as thresholds. ’774 Patent, 13:61-
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`62; Fig. 4. Sakamoto’s two thresholds are not a great number and cannot be a
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`multitude. Therefore, Sakamoto does not and cannot disclose this limitation.
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`For at least this reason, the Petitioner has failed to meet its burden of showing
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`a reasonable likelihood that the prior art on which it relies discloses this limitation
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`as recited in independent claim 8. Dependent claims 10, 13, and 15 also incorporate
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`this limitation. As such, the Petitioner’s request for institution of an IPR should be
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`denied at least for claims 8, 10, 13, and 15 under all grounds of unpatentability.
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`17
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`III. CONCLUSION
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`For the reasons set forth above, Petitioner has not demonstrated a reasonable
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`likelihood of success on its obviousness argument for any claim in the ’774 Patent.
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`Accordingly, the petition should be denied.
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`
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`Respectfully submitted,
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`BUTZEL LONG, PC
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`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
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`Date: December 9, 2020
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`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
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`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing PATENT
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`OWNER’S PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
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`REVIEW OF U.S. PAT. NO. 8,497,774 contains 3,645 words, excluding the parts
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`of the petition exempted by 37 C.F.R. § 42.24(a), as measured by the word-
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`processing system used to prepare this paper.
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`BUTZEL LONG, PC
`
`
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
`
`
`Date: December 9, 2020
`
`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`
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`Case IPR2020-01189
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that PURSUANT TO 37 C.F.R. §42.8(a)(2)
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`the foregoing PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
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`FOR INTER PARTES REVIEW OF U.S. PAT. NO. 8,497,774 is being served
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`electronically via e-mail on December 9, 2020, in its entirety on the following
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`counsel of record for Petitioners:
`
`Jennifer C. Bailey (Lead Counsel)
`USPTO Reg. No. 52,583
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`PTAB@eriseip.com
`Phone: (913) 777-5600
`Fax: (913) 777-5601
`
`
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`
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`Date: December 9, 2020
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`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
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`
`
`Adam P. Seitz (Back-Up Counsel)
`USPTO Reg. No. 52,206
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`PTAB@eriseip.com
`Phone: (913) 777-5600
`Fax: (913) 777-5601
`
`BUTZEL LONG, PC
`
`
`
`Shaun D. Gregory
`USPTO Reg. No. 68,498
`Counsel for Patent Owner
`
`
`
`