UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`LBT IP I LLC,
`
`Patent Owner
`____________
`
`Case IPR2020-01192
`U.S. Patent No. 8,421,618
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PAT. NO. 8,421,618
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`LBT IP I LLC,
`
`Patent Owner
`____________
`
`Case IPR2020-01192
`U.S. Patent No. 8,421,618
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PAT. NO. 8,421,618
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii.
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .......................................................................... II
`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. ....................................... 2
`A.
`Petitioner’s Proposed Combinations of References are
`Improper. ..................................................................................... 2
`i.
`Petitioner’s Proposed Combinations Impermissibly
`Change the Fundamental Behavior of Sakamoto. ............ 4
`Petitioner’s Proposed Combinations Rely on
`Impermissible Hindsight. ................................................10
`Even Under Petitioner’s Proposed Combinations, It Has Failed
`To Show That The Prior Art Discloses All Limitations. ..........11
`i.
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 1(b) “Accelerometer Circuitry to
`Measure Displacements of the Portable Electronic
`Tracking Device”. ...........................................................11
`ii. The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 1(c) “a Battery Power Monitor
`Configured to Selectively Activate and Deactivate at
`Least One Portion of the Transceiver Circuitry and
`Location Tracking Circuitry to Conserve Battery Power
`in Response to a Signal Level of the at Least One Portion
`of the Receive Communication Signal”. ........................14
`III. CONCLUSION ...................................................................................16
`
`
`B.
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`i
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`TABLE OF AUTHORITIES
`
`Cases
`
`KSR Int’l Co. v. Teleflex, Inc.,
` 550 U.S. 398 (2007) ................................................................................................ 3
`
`Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
` 566 F.3d 989 (Fed. Cir. 2009) ................................................................................ 3
`
`Board Decisions
`
`Apotex Inc. v. Wyeth LLC,
` IPR2014-00115, Paper 94 (PTAB Apr. 20, 2015) ................................................. 3
`
`asterImage 3D, Inc. v. RealID Inc.,
` IPR2015-00877, Paper 8 (PTAB Sept. 9, 2015) ..................................................... 4
`
`TRW Automotive U.S. LLC v. Magna Electronics, Inc.,
` IPR2015-00951, Paper 8 (PTAB Sept. 17, 2015) ................................................... 3
`
`Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
` IPR2015-00276, Paper 8 (PTAB Jun. 1, 2015) ...................................................... 3
`
`
`
`
`
`
`
`
`ii
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
`
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`The Petitioner has not demonstrated a reasonable likelihood of success in its
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`argument that any of the challenged claims of U.S. Patent No. 8,421,618 (“the ’618
`
`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
`
`disclose required limitations from the challenged claims. Because the Petitioner has
`
`not met its burden, its request for institution of an inter partes review (“IPR”) should
`
`be denied.
`
`I.
`
`INTRODUCTION
`
`The ’618 Patent describes a device and method to monitor location
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`coordinates of an electronic tracking device. Ex. 1001, Abstract. The device
`
`includes transceiver circuitry, accelerometer circuitry, a battery power monitor to
`
`selectively activate and deactivate at least one portion of the transceiver circuitry
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`and location tracking circuitry, and processor circuitry. Id.
`
`Independent claim 1 recites, in part:
`
`accelerometer circuitry to measure displacements of the portable
`
`electronic tracking device;
`
`a battery power monitor configured to selectively activate and
`
`deactivate at least one portion of the transceiver circuitry and location
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`
`
`1
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`tracking circuitry to conserve battery power in response to a signal level
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`of the at least one portion of the receive communication signal;
`
`Id., Claim 1.
`
`Independent claim 15 recites, in part:
`
`measuring displacements of the portable electronic tracking device;
`
`activating and deactivating at least one portion of the transceiver
`
`circuitry and location tracking circuitry to conserve battery power in
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`response to a signal level of the at least one portion of the receive
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`communication signal;
`
`Id., Claim 15.
`
`Of note, displacements of the device are measured. In addition, independent
`
`claims 1 and 15 recite a single “signal level” in response to which activation and
`
`deactivation occurs.
`
`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,
`
`
`
`and because the references relied upon by Petition do not disclose required
`
`limitations from those claims, the petition must be denied.
`
`A.
`
`Petitioner’s Proposed Combinations of References are
`Improper.
`
`
`
`
`2
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`The Petitioner bears the burden of proof for showing that a proposed
`
`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
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`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
`
`change the fundamental behavior of a primary reference. In TRW Automotive U.S.
`
`LLC v. Magna Electronics, Inc., the petitioner failed to explain “why a forward-
`
`facing camera orientation” would have improved a prior art system and failed to
`
`show that a “POSA would have had a good reason to change the rearward-facing
`
`orientation.” IPR2015-00951, Paper 8, slip op. at 15, 17 (September 17, 2015)
`
`(emphasis in original). Furthermore, the Petitioner must not rely on impermissible
`
`hindsight where prior art references look combinable only through a prism of
`
`
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`3
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`Case IPR2020-01192
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`knowledge gleaned from a new invention. asterImage 3D, Inc. v. RealID Inc.,
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`IPR2015-00877, Paper 8, slip op. at 21-22 (September 9, 2015).
`
`i.
`
`Petitioner’s Proposed Combinations Impermissibly
`Change the Fundamental Behavior of 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
`
`transmitted. Ex. 1004, Abstract, [0018], [0030-0031]. In 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
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`is equal to or lower than a predetermined threshold value, …; if it
`
`is determined that the normal sensitivity positioning mode is
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`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
`
`equal to or lower than a predetermined threshold value, the
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`position search may be stopped.
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`
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`4
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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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`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
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`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
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`normal, the GPS receiver works harder when the signal level is less than normal, and
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`5
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`the GPS receiver stops working when the signal level is such that the GPS receiver
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`cannot perform GPS positioning.
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`The Petitioner relies on U.S. Patent No. 5,583,776 to Levi et al. (“Levi”) (Ex.
`
`1006) as a secondary reference. Levi is directed to “[a] microcomputer-assisted
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`position finding system that integrates GPS data, dead reckoning sensors, and digital
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`maps into a low-cost, self-contained navigation instrument”. Ex. 1006, Abstract.
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`Levi discloses “[u]nique dead reckoning sensors and features…for ground
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`speed/distance measurement and computer-aided position fixes.” Id.
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`To the extent Levi discloses an accelerometer, such accelerometer is part of a
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`pedometer used to measure footsteps. In particular, Levi discloses:
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`The present invention uses an accelerometer to provide acceleration
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`data indicative of footsteps. The basic sensor for the navigation
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`pedometer of the presently preferred embodiment comprises a silicon
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`accelerometer. The accelerometer may be mounted or attached at any
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`convenient point on the user’s body, as long as it can sense the
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`harmonic motions and impact accelerations that result from walking or
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`running. Other footstep sensors may be used, such as force sensors
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`embedded in the user’s show. Shoe sensors, however, may be
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`impractical, since they require special show modifications and possibly
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`wires up the leg of the user. Silicon accelerometers have recently
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`become available at low cost from several vendors. The device is
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`“micromachined” from solid silicon using much the same techniques
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`as used for integrated circuit manufacture.
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`Ex. 1006, 3:12-26. As such, Levi’s accelerometer is specifically utilized to measure
`
`footsteps.
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`Levi further discloses:
`
`The DR software module of the present invention performs dead
`
`reckoning (DR) navigation by sampling vector velocities for
`
`incremental course changes.
`
` Calculations can be performed
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`continuously whenever there is a detected velocity. The DR software
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`accesses the compass, altimeter, pedometer frequency, and calibration
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`table data to obtain velocity magnitude and 3-D direction. The DR
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`software normally uses GPS to obtain starting positions when GPS is
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`valid, but also accepts manual position fixes by map selection or text
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`entry. When GPS is not valid, DR uses the last fix, whether GPS or
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`manual, for a start point. DR navigation is automatically used by the
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`navigation module when GPS is unavailable. The map and navigation
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`modules are used to select a manual fix location from the map, or to
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`manually switch between DR and GPS navigation.
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`Ex. 1006, 7:64-8:11.
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`7
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`As such, Levi discloses, in context, a dead reckoning (DR) navigation system
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`that is “performed continuously whenever there is a detected velocity”. Id. Such
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`DR navigation system “uses GPS to obtain starting positions when GPS is valid”
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`and “[w]hen GPS is not valid, DR uses the last fix, whether GPS or manual, for a
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`start point.” While Levi’s “DR navigation is automatically used by the navigation
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`module when GPS is unavailable,” Levi does not disclose that the DR navigation
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`system is utilized because GPS is unavailable or that the DR navigation system is
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`not utilized when GPS is available. To the contrary, Levi explicitly discloses that
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`the DR navigation system is utilized when GPS is available.
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`The Petitioner asserts:
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`Sakamoto does not teach an accelerometer. In related art, Levi teaches
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`an “electronic, portable navigational system[]” including an “integrated
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`GPS-DR navigation system” using an accelerometer. Levi, 1:8-11, 2:5-
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`14, 3:12-13. Like Sakamoto, Levi recognizes GPS signals may
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`sometimes be unavailable. Levi, 2:5-14. In such cases, Levi teaches
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`supplementing GPS-based position determination with accelerometer
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`data by determining the current position based on accelerometer data.
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`Levi, 1:49-55, 7:64-8:35.
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`Paper 1, 13. Thus, the Petitioner mischaracterizes Levi as teaching that an
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`accelerometer may be used to determine a current position. Based on this
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`
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`8
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`mischaracterization, the Petitioner’s proposed combination would simply add
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`Levi’s accelerometer to Sakamoto’s GPS positioning system, resulting in a
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`system that continues to determine location based on an accelerometer when
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`GPS is unavailable.
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`Based on the actual disclosure of Levi, the proposed combination of Sakamoto
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`and Levi would result in a GPS positioning system that measures footsteps (as
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`disclosed by Levi) and independently operates a GPS receiver in one of three modes
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`based on the quality of received GPS signals (as disclosed by Sakamoto). However,
`
`the Petitioner acknowledges “(c) a POSITA would not have combined an
`
`accelerometer into the Sakamoto system without also including the hardware and/or
`
`software necessary for utilizing the accelerometer. Dec., 92-100.” Paper 1, 14. As
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`discussed above, “the hardware and/or software necessary for utilizing the
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`accelerometer” would include Levi’s DR software module that operates regardless
`
`of whether GPS is available or not. Thus, the Petitioner’s proposed combination
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`would result in a DR software module that utilizes a GPS fix when available (as
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`taught by Levi) and a GPS positioning system that operates a GPS receiver in one of
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`three modes (as taught by Sakamoto).
`
`For both of these situations, the proposed combination of Sakamoto and Levi
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`would result in additional power consumption in order to operate either the
`
`pedometer or the DR software module. However, Sakamoto explicitly discloses:
`
`
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`9
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`However, it is necessary to keep the GPS receiver itself running, and
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`when applied to devices with limited battery capacity such as portable
`
`terminals, it is necessary to flexibly control the operation mode of the
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`GPS receiver from the outside and selectively use the highly sensitive
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`positioning operation and the normal positioning operation.
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`Ex. 1004, [0003]. That is, the principal operation of Sakamoto is to transition
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`between the three modes of operation in order to conserve battery consumption. The
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`Petitioner’s proposed combination would result in increased battery consumption
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`and fundamentally alter Sakamoto’s principal operation in an impermissible fashion.
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`The proposed combination of Sakamoto and Levi, as articulated by the
`
`Petitioner, would fundamentally change the operation of Sakamoto in an
`
`impermissible fashion. The proposed combination forms the basis for all proposed
`
`grounds of unpatentability. As such, all grounds fail and the Petitioner’s request for
`
`institution of an IPR should be denied.
`
`ii.
`
`Petitioner’s Proposed Combinations Rely
`Impermissible Hindsight.
`
`As discussed above, Sakamoto discloses three modes of operation. In a first
`
`on
`
`mode, a GPS receiver operates normally to perform positioning services. See Ex.
`
`1004, [0024], [0038]. In a second mode, the GPS receiver constantly operates to
`
`perform positioning services because a signal has been degraded. See Id., [0025],
`
`
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`10
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`U.S. Patent No. 8,421,618
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`[0038]. In a third mode, the GPS receiver is shut off because positioning services
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`cannot be performed. See Id., [0038]. In addition, Sakamoto discloses two
`
`predetermined threshold values. See Id. In contrast, Levi discloses a DR navigation
`
`system that continuously performs calculations. Ex. 1006, 7:66-67. Furthermore,
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`Levi’s DR navigation system uses GPS fixes when available and either GPS or
`
`manual last fixes when GPS is unavailable. Id., 8:3-8. That is, the DR navigation
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`system operates regardless of whether or not GPS signals are available.
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`Neither Sakamoto nor Levi suggests any combination such that an
`
`accelerometer is used to determine positioning because a GPS signal is unavailable.
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`To the contrary, Levi explicitly discloses that the DR navigation system is
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`continuously operated, even when GPS is available. The only suggestion to modify
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`Sakamoto as proposed by the Petitioner is impermissible hindsight based on the
`
`claims of the ‘618 Patent. As such, all proposed grounds of unpatentability fail and
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`the Petitioner’s request for institution of an IPR should be denied.
`
`B.
`
`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(b) “Accelerometer Circuitry to
`
`
`
`11
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`U.S. Patent No. 8,421,618
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`Measure Displacements of the Portable Electronic
`Tracking Device”.
`
`The Petitioner has failed to meet its burden of showing a reasonable likelihood
`
`that the prior art on which it relies discloses the limitation “accelerometer circuitry
`
`to measure displacements of the portable electronic tracking device.” This limitation
`
`is recited in independent claim 1 and a similar limitation is recited in independent
`
`claim 15.
`
`The Petitioner relies on Levi as disclosing this limitation. The Petitioner
`
`asserts:
`
`Levi teaches a portable navigation system using both GPS and dead
`
`reckoning based on accelerometer data to determine a user’s position.
`
`Levi, 1:8-11, 1:59-63. Levi teaches an accelerometer in a dead
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`reckoning (DR) system. Levi, 3:12-13, 2:5-14; Dec. 129. Levi’s
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`accelerometer, incorporated in a pedometer, senses “harmonic motions
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`and impact accelerations that result from walking or running.” Levi,
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`3:12-19. Levi’s DR system supplements the GPS system when GPS is
`
`unavailable. Levi, 8:7-9, 1:51-53 (disclosing “supplementing the GPS
`
`position” with DR).
`
`Paper 1, 29-30.
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`
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`12
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`In contrast to the Petitioner’s assertions, Levi’s accelerometer measures
`
`footsteps by “sense[ing] the harmonic motions and impact accelerations that result
`
`from walking or running.” Ex. 1004, 3:17-19. However, footsteps are not
`
`“displacements of the portable electronic tracking device” as recited in this
`
`limitation. Furthermore, “harmonic motions and impact accelerations that result
`
`from walking or running” are also not “displacements of the portable electronic
`
`tracking device” as recited in this limitation. To the contrary, the ’618 Patent
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`discloses “the electronic tracking device 100 communicates displacement vectors
`
`(e.g., differential location coordinates),” “physical impacts on electronic tracking
`
`device 100 are measured to determine if an individual or object may be injured,” and
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`“magnitude of displacement vectors may be measured by one or more
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`accelerometers, such as accelerometer 130, disposed at various inclinations and
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`orientations”. Ex. 1001, 8:5-7; 9:6-11. Even if, arguendo, Levi’s “velocity
`
`magnitude and 3-D direction” were to be considered “displacements of the portable
`
`electronic tracking device,” Levi does not disclose that such are measured by an
`
`accelerometer. To the contrary, Levi explicitly discloses “[t]he DR software
`
`accesses the compass, altimeter, pedometer frequency, and calibration table data to
`
`obtain velocity magnitude and 3-D direction.” Ex. 1004, 8:1-3. As such, Levi fails
`
`to disclose this limitation.
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`13
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`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 and similarly recited in independent claim 15.
`
`Dependent claims 2-14 and 16-24 also incorporate this limitation. As such, the
`
`Petitioner’s request for institution of an IPR should be denied under all grounds of
`
`unpatentability.
`
`ii.
`
`The Prior Art Relied Upon By The Petitioner Does Not
`Disclose Limitation 1(c) “a Battery Power Monitor
`Configured to Selectively Activate and Deactivate at
`Least One Portion of the Transceiver Circuitry and
`Location Tracking Circuitry to Conserve Battery
`Power in Response to a Signal Level of the at Least One
`Portion of the Receive Communication Signal”.
`
`Petitioner has also failed to meet its burden of showing a reasonable likelihood
`
`that the prior art on which it relies discloses the limitation “a battery power monitor
`
`configured to selectively activate and deactivate at least one portion of the
`
`transceiver circuitry and location tracking circuitry to conserve battery power in
`
`response to a signal level of the at least one portion of the receive communication
`
`signal.” This limitation is recited in independent claim 1 and a similar limitation is
`
`recited in independent claim 15.
`
`The Petitioner relies on Sakamoto as disclosing this limitation. However, as
`
`discussed above, Sakamoto explicitly discloses two threshold values and three
`
`operating modes. Ex. 1004, [0024]-[0025], [0038]. More specifically, Sakamoto
`
`
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`14
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`U.S. Patent No. 8,421,618
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`discloses that a) the GPS receiver intermittently operates when a signal level exceeds
`
`a first threshold, b) the GPS receiver constantly operates when the signal level does
`
`not exceed the first threshold, and c) the GPS receiver stops operating when the
`
`signal level falls below a second threshold. In the language of claim 1, Sakamoto
`
`discloses selectively activating, altering, and deactivating at least one portion of
`
`the transceiver circuitry and location tracking circuitry to conserve battery power in
`
`response to two signal levels of the at least one portion of the receive communication
`
`signal. That is, Sakamoto discloses taking one of three actions in response to one of
`
`two triggers. Taking one of three actions in response to one of two triggers, as
`
`disclosed by Sakamoto, is not the same as taking one of two actions in response to
`
`one trigger, as recited in this limitation. Even though two of the three actions and
`
`one of the triggers, as disclosed by Sakamoto, may arguably map to elements of this
`
`limitation, the teachings of Sakamoto, when taken as a whole and in proper context,
`
`are fundamentally different from what is recited in this limitation. Sakamoto can
`
`only disclose this limitation if portions of Sakamoto’s disclosure are impermissibly
`
`ignored.
`
`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 and similarly recited in independent claim 15.
`
`Dependent claims 2-14 and 16-24 also incorporate this limitation. As such, the
`
`
`
`15
`
`
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
`
`Petitioner’s request for institution of an IPR should be denied under all grounds of
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`unpatentability.
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`III. CONCLUSION
`
`For the reasons set forth above, Petitioner has not demonstrated a reasonable
`
`likelihood of success on its obviousness argument for any claim in the ’618 Patent.
`
`Accordingly, the petition should be denied.
`
`
`
`Respectfully submitted,
`
`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
`
`
`
`16
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`
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
`
`
`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing PATENT
`
`OWNER’S PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
`
`REVIEW OF U.S. PAT. NO. 8,542,113 contains 3,169 words, excluding the parts
`
`of the petition exempted by 37 C.F.R. § 42.24(a), as measured by the word-
`
`processing system used to prepare this paper.
`
`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
`
`
`
`
`
`
`
`
`
`
`Case IPR2020-01192
`U.S. Patent No. 8,421,618
`
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that PURSUANT TO 37 C.F.R. §42.8(a)(2)
`
`the foregoing PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`
`FOR INTER PARTES REVIEW OF U.S. PAT. NO. 8,542,113 is being served
`
`electronically via e-mail on December 9, 2020, in its entirety on the following
`
`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
`
`
`
`
`
`
`
`
`Date: December 9, 2020
`
`1909 K Street, N.W.
`Suite 500
`Washington, DC 20006
`(202) 454-2800
`
`
`
`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
`
`
`
`
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