UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`
`CASE: IPR2022-00426
`U.S. PATENT NO. 8,761,804
`
`_______________________
`
`
`PATENT OWNER'S SURREPLY
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`
`CASE: IPR2022-00426
`U.S. PATENT NO. 8,761,804
`
`_______________________
`
`
`PATENT OWNER'S SURREPLY
`
`
`
`
`
`
`
`
`I.
`II.
`
`
`
`TABLE OF CONTENTS
`Introduction ................................................................................................... 1
`Claim Construction ....................................................................................... 1
`A.
`"Beaconed By The Sending Data Processing System" ...................... 1
`B.
`"Transmitting … The Broadcast Unidirectional
`Wireless Data Record For Receipt By A Plurality Of
`Receiving Mobile Data Processing System In A
`Wireless Vicinity Of The Sending Data Processing
`System …" .......................................................................................... 6
`III. Himmelstein In Combination With Myr Fails To
`Render Any Challenged Claim Obvious ..................................................... 7
`
`A.
`
`The Himmelstein/Myr Combination Does Not Disclose
`The "Beaconed By The Sending Data Processing
`System" Limitation ............................................................................. 7
`
`B.
`
`The Himmelstein/Myr Combination Does Not Disclose
`"Transmitting … The Broadcast Unidirectional Wireless
`Data Record For Receipt By A Plurality Of Receiving
`Mobile Data Processing System In A Wireless Vicinity
`Of The Sending Data Processing System ........................................... 9
`
`C. A POSITA Would Have Had No Reason To Combine
`Himmelstein And Myr ..................................................................... 12
`
`
`
`
`
`
`
`
`IV. Objective Indicia Of Non-Obviousness Demonstrates
`
`The Patentability Of The Challenged Claims ............................................. 14
`
`
`Copying ............................................................................................ 14
`A.
`Commercial Success......................................................................... 16
`B.
`Licensing .......................................................................................... 16
`C.
`Conclusion .................................................................................................. 17
`
`V.
`
`41125788.1.docx
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`Akzo Nobel Coatings, Inc. v. Dow Chemical Co.,
`
`811 F.3d 1334 (Fed. Cir. 2016) .................................................................... 4
`Apple, Inc. v. Samsung Electronics, Co., Ltd.,
`
`839 F.3d 1034 (Fed. Cir. 2016) .................................................................. 16
`Chemours Company FC, LLC v. Daikin Industries,
`
`4 F.4th 1370 (Fed. Cir. 2021) ..................................................................... 14
`Continental Circuits LLC v. Intel Corp.,
`
`915 F.3d 788 (Fed. Cir. 2019) ...................................................................... 5
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`
`567 F.3d 1314 (Fed. Cir. 2009) .................................................................. 15
`Galderma Labs., L.P. v. Tolmar, Inc.,
`
`737 F.3d 731 (Fed. Cir. 2013) .................................................................... 12
`Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino,
`
`738 F.3d 1337 (Fed. Cir. 2013) ............................................................ 15, 17
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`
`392 F.3d 1317 (Fed. Cir. 2004) .................................................................. 14
`Liqwd, Inc. v. L'Oreal USA, Inc.,
`
`941 F.3d 1133 (Fed. Cir. 2019) ............................................................ 14, 15
`SAS Inst. Inc. v. Iancu,
`
`584 U.S. ___, 138 S. Ct. 1348, 1357 (2018) ................................................ 5
`Williamson v. Citrix Online, LLC,
`
`792 F.3d 1339 (Fed. Cir. 2015) .................................................................. 10
`
`Other Authority
`
`35 U.S.C. § 312 ....................................................................................................... 5
`
`All emphasis supplied unless otherwise noted.
`
`
`
`41125788.1.docx
`
`ii
`
`
`
`
`
`Exhibit
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`2008
`
`2009
`
`2010
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`2017
`2018
`
`TABLE OF EXHIBITS
`
`
`Description
`Memorandum Opinion & Order Denying the Motion to
`Transfer Venue of Defendants Hewlett Packard Enterprise
`Co., Aruba Networks, LLC and Cisco Systems, Inc., Filed
`February 16, 2022 (E.D. Tex.)
`Memorandum Opinion & Order Denying Apple Inc.'s
`Motion to Transfer Venue filed February 24, 2022 (Public
`Version) (W.D. Tex)
`LegalMetric District Report Texas Western District Court in
`Patent Cases, January 2017-September 2021
`LegalMetric District Report Texas Eastern District Court in
`Patent Cases, January 2017-September 2021
`Order Granting Joint Motion to Dismiss Claims of Patent
`Owner and Cisco Systems, Inc. with Prejudice (E.D. Tex.)
`Claim Construction Order filed February 24, 2022 (W.D.
`Tex.)
`Claim Construction Order March 23, 2022 (W.D. Tex.)
`Complaint for Patent Infringement filed May 25, 2021 (W.D.
`Tex.)
`Claim Construction Memorandum Opinion and Order March
`14, 2022 (E.D. Tex.)
`BillJCo's Motion to Compel (Redacted Copy) (E.D. Tex.)
`Defendants, Hewlett Packard Enterprise Company and
`Aruba Networks, LLC’ Motion to Compel Discovery
`(Redacted Copy) (E.D. Tex.)
`Affidavit of Service of Apple Inc. on May 28, 2021 (W.D.
`Tex.)
`Affidavit of Service of Cisco Systems, Inc. on May 26, 2021
`(E.D. Tex.)
`Affidavit of Service of Hewlett Packard Enterprise Company
`on May 25, 2021 (E.D. Tex.)
`Affidavit of Service of Aruba Networks on May 25, 2021
`(E.D. Tex.)
`Apple Inc.'s Preliminary Invalidity Contentions (W.D. Tex.)
`Defendants' Preliminary Invalidity Contentions (E.D. Tex.)
`First Amended Docket Control Order (E.D. Tex.)
`
`41125788.1.docx
`
`iii
`
`
`
`
`
`Exhibit
`2019
`
`2020
`
`2021
`
`2022
`2023
`
`2024
`
`2025
`2026
`
`2027
`2028
`
`2029
`2030
`2031
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`
`Description
`Complaint for Patent Infringement filed May 25, 2021
`(Cisco System, Inc.) (E.D. Tex.)
`Complaint for Patent Infringement filed May 25, 2021
`(Hewlett Packard Enterprise Company and Aruba Networks,
`LLC (E.D. Tex.)
`Apple Inc.'s Final Invalidity Contentions (W.D. Tex.) (pp
`1097-1421)
`Order regarding Apple Inc.'s Motion to Dismiss (W.D. Tex.)
`Order regarding Mediation between Hewlett Packard
`Enterprise Company, Aruba Networks and Patent Owner
`(E.D. Tex.)
`Affidavit of Courtland C. Merrill in Support of Pro Hac Vice
`Admission Under 37 C.F.R. § 42.10 (c)
`Declaration of Jacob Sharony re '804 Patent
`Deposition of Darryl Long dated September 29, 2022 in
`IPR2022-00426 Petition for Inter Partes Review of U.S.
`Patent 8,761,804
`Excerpts of U.S. Patent 10,292,011
`Amended Complaint and Select Exhibits [Northern District
`of California] (SEALED)
`Patent License Agreement (SEALED)
`Patent License Agreement (SEALED)
`Patent License Agreement (SEALED)
`Video: “What's New in Core Location ‐ WWDC 2013 ‐
`Videos ‐ Apple Dev.mp4” [Produced Natively]
`Transcript Excerpt from Video “What’s New in Core
`Location – WWDC 2013 -Videos – Apple Dev.mp4” from:
`https://developer.apple.com/videos/play/wwdc2013/307/ at
`[32:40 – 33:59] (accessed Apr. 22, 2021)
`Screen shot from video: “What's New in Core Location ‐
`WWDC 2013 ‐ Videos ‐ Apple Dev.mp4” at 34:18
`Getting Started with iBeacon
`[https://developer.apple.com/ibeacon/Getting-Started-with-
`iBeacon.pdf]
`Deposition of Darryl Long dated September 29, 2022 in
`IPR2022-00426 Petition for Inter Partes Review of U.S.
`Patent 8,761,804
`
`41125788.1.docx
`
`iv
`
`
`
`
`
`I.
`
`
`Introduction
`None of the Challenged Claims are unpatentable under either of Petitioner's
`
`grounds alleging obviousness. The cited prior art simply fails to disclose each and
`
`every claimed limitation as properly construed. Moreover, a person would not have
`
`been motivated to even make the suggested combinations. Lastly, Petitioner fails to
`
`rebut the substantial evidence of objective indicia of non-obviousness. Rather than
`
`present any rebuttal evidence, Petitioner relies on incorrect statements of law and
`
`unsupported attorney argument.
`
`II. Claim Construction
`
`Since the outset, Petitioner has asserted in only a conclusory fashion that the
`
`claims should be afforded their plain and ordinary meaning, and then argued that
`
`disclosures from the prior art fell within the plain and ordinary meaning. Faced with
`
`testimony by its expert demonstrating that the plain and ordinary meaning of
`
`"beaconing" and "transmitting … the broadcast unidirectional wireless data record"
`
`is as PO proposes, and not as Petitioner implicitly assumed, Petitioner now argues
`
`without support that PO's proposals are wrong. Petitioner's arguments are
`
`insufficient to overcome the actual evidence, including testimony about the meaning
`
`of claim terms by its own expert and PO's expert.
`
`
`
`
`
`A.
`
`"Beaconed By The Sending Data Processing System"
`
`Claim terms with the root word "beacon" are recited in several places in each
`
`of the Challenged Claims. Referring to claim 1 for example, which states in part:
`
`41125788.1.docx
`
`1
`
`
`
`
`
`maintaining, by the sending data processing system, a configuration for
`when to perform beaconing of the broadcast unidirectional wireless data
`record; and
`
`transmitting, by the sending data processing system, the broadcast
`unidirectional wireless data record for receipt by a plurality of receiving
`mobile data processing systems in a wireless vicinity of the sending data
`processing system wherein the broadcast unidirectional wireless data
`record is beaconed by the sending data processing system in accordance
`with the configuration for when to perform beaconing …
`
`EX1001, 118:21-33. Petitioner offered no explanation for "beacon" in the Petition.
`
`Instead, Petitioner merely referenced Myr's purported teaching of periodic
`
`transmissions, assuming such to be the same as "beaconing." Pet. at 42.
`
`
`
`The evidence of record establishes the plain and ordinary meaning of
`
`"beacon" not to be simply any transmission or even a periodic transmission. Instead,
`
`a "beacon" is understood in the art to be a transmission designed to attract attention
`
`to a specific location. See POR at 15-17. This evidence includes the patent
`
`specification and extrinsic evidence comprising dictionaries and expert testimony
`
`(Id.); such expert testimony including Petitioner's own expert who explained that
`
`whether a signal is a "beacon" depends on the intent that it is used to locate the
`
`transmitter. EX2026, 22:13-25; 25:3-16.
`
`
`
`In addition, the overall context of the claim itself demonstrates PO's
`
`construction to be correct. As is recited in the claim, the "wireless data record" that
`
`is prepared and transmitted by the sending data processing system includes, inter
`
`alia, "identity information for describing the originator identity associated with the
`
`41125788.1.docx
`
`2
`
`
`
`
`
`sending data processing system," "location information associated with the sending
`
`data processing system," and "reference information for further describing the
`
`location information associated with the sending data processing system." EX1001,
`
`118:8-53. This location and identity information fully aligns with PO's construction,
`
`as well as the experts' unrebutted testimony that the plain and ordinary meaning of
`
`"beacon" is a transmission made to attract attention to a location of the transmitter,
`
`which in the Challenged Claims is the "sending data processing system."
`
`
`
`In the Reply, Petitioner merely reasserts that "beaconing" means "periodically
`
`transmitting." Reply at 3. The only evidence of record demonstrates periodicity is
`
`not indicative of a beacon. First, Petitioner's expert, Dr. Long, explained that,
`
`consistent with Patent Owner's construction, the plain and ordinary meaning for a
`
`beacon relates to signaling the presence of the transmitter, and further clarified that
`
`a beacon "can be directional or nondirectional … it could be periodic or it could be
`
`continuous…." EX2036, 26:2-14. If as Dr. Long testified a beacon "could be
`
`periodic of it could be continuous," then a transmission is not a beacon simply
`
`because it is periodic. Patent Owner's expert, Dr. Sharony, similarly explained that
`
`"periodicity and beaconing are conceptually different." EX2025, ¶ 64. Each expert's
`
`testimony corresponds to the other extrinsic evidence of record establishing a beacon
`
`41125788.1.docx
`
`3
`
`
`
`
`
`to be designed to attract attention to a transmitter, and that the fact that a transmission
`
`is periodic does not make it a beacon.1
`
`
`
`Petitioner argues incorrectly that PO's position and Dr. Sharony's opinion in
`
`the co-pending 427 IPR contradict their positions here. Reply at 5. Petitioner
`
`references Dr. Sharony's explanation that "periodic beaconing" is "beaconing
`
`occurring or reoccurring at regular intervals." Id. By using "beaconing" as part of his
`
`explanation for "periodic beaconing," it is clear Dr. Sharony is explaining the
`
`meaning of "periodic," which is found in the Challenged Claims in the 427 IPR. The
`
`modifier "periodic" does not appear, however, in the Challenged Claims of the '804
`
`Patent. It would be improper to read in an unstated limitation. Akzo Nobel Coatings,
`
`Inc. v. Dow Chemical Co., 811 F.3d 1334, 1340 (Fed. Cir. 2016). Indeed, that the
`
`'011 Patent, which is at issue in the 427 IPR, recites "periodically beaconing"
`
`demonstrates that "beaconing" by itself does not mean "periodic beaconing,"
`
`because the "periodically" in "periodically beaconing" would be superfluous. Id.
`
`
`
`Petitioner further argues "the '804 Patent equates the act of beaconing as 'a
`
`periodic broadcast.'" Reply at 3. In support, Petitioner cites to a preferred
`
`embodiment. Id. Of course, it is improper to incorporate preferred embodiments into
`
`
`1 Standard definitions for "beacon" include nothing about periodicity.
`https://en.wikipedia.org/wiki/Beacon;
`https://dictionary.cambridge.org/us/dictionary/english/beacon;
`https://www.britannica.com/dictionary/beacon
`4
`
`41125788.1.docx
`
`
`
`
`
`the scope of the claim absent a clear intent in the intrinsic evidence to do so.
`
`Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019). In this
`
`case, the claim is silent as to any periodicity of the transmitting step (EX1001,
`
`118:24-53), and adding this unrecited limitation would be improper. Id. Indeed, as
`
`is demonstrated by the '011 Patent at issue in the 427 IPR, the patentee was fully
`
`aware of how to claim "periodic beaconing" when that type of beaconing was
`
`desired. In the '804 Patent, however, the patentee chose to not restrict the claimed
`
`beaconing to periodic beaconing.
`
`
`
`Moreover, Petitioner never contended that Patent Owner acted as a
`
`lexicographer and defined "beacon" in a way that differed from the plain and
`
`ordinary meaning. Instead, Petitioner argued the claim terms should be given their
`
`plain and ordinary meaning. Pet. at 9. Petitioner's attempt to now argue lexicography
`
`should be disregarded as contrary to the position it took in the Petition. So too should
`
`Petitioner's cited portion of the '804 Patent be disregarded because Petitioner did not
`
`identify this evidence in its Petition. 35 U.S.C. § 312; SAS Inst. Inc. v. Iancu, 584
`
`U.S. ___, 138 S. Ct. 1348, 1357 (2018) (“the petitioner's contentions, [...] define the
`
`scope of the litigation all the way from institution through to conclusion”). Petitioner
`
`will likely attempt to argue that the plain and ordinary meaning of "beacon" is
`
`"periodic transmission," but has no evidence to support such a claim.
`
`
`
`
`
`
`
`41125788.1.docx
`
`5
`
`
`
`
`
`
`
`
`
`B.
`
`"Transmitting … The Broadcast Unidirectional
`Wireless Data Record For Receipt By A Plurality Of
`Receiving Mobile Data Processing System In A Wireless
`Vicinity Of The Sending Data Processing System …"
`PO argues that this limitation should be understood such that transmitting by
`
`the sending data processing system is via a unidirectional beacon directly to the
`
`wireless devices in the vicinity of the sending data processing system. In response,
`
`Petitioner argues that PO's support contradicts this construction. Reply at 6.
`
`Petitioner references PO's citation to the '804 Patent's teaching that "[i]t is an
`
`advantage here for locating as many MSs as possible in a wireless network, and
`
`without additional deployment costs on the MSs or the network." Id. Petitioner then
`
`reasons that "a defined network of devices can be a wireless network, particularly
`
`when communication among the devices is wireless." Id.
`
`
`
`Petitioner's arguments are inapposite. The question is not whether a network
`
`of devices can be wireless. Indeed, the claim specifically recites that the transmission
`
`is wireless. Rather, a relevant point is that the transmitted wireless records are
`
`directly received by the receiving mobile data processing systems. Another relevant
`
`point is that the network of wireless devices is not a "defined" network. In other
`
`words, the network is not of known devices. Rather, as the claim states, the
`
`transmission is to any MSs in a particular vicinity of the sending data processing
`
`system. Petitioner does not dispute that either of these points are correct.
`
`41125788.1.docx
`
`6
`
`
`
`III. Himmelstein In Combination With Myr Fails To
`Render Any Challenged Claim Obvious
`
`
`
`
`
`
`The combination of Himmelstein and Myr fails to disclose each and every of
`
`the claimed limitations. Moreover, a POSITA would not have been motivated to
`
`combine Himmelstein and Myr in the manner claimed in the Challenged Claims.
`
`As such, Petitioner's obviousness contentions must fail.
`
`A.
`
`The Himmelstein/Myr Combination Does Not Disclose The
`"Beaconed By The Sending Data Processing System" Limitation
`
`Petitioner argues in its response that even if PO's claim constructions are
`
`
`
`
`accepted, the combination of Himmelstein and Myr discloses the "beaconed by the
`
`sending data processing system" limitation. Petitioner is incorrect. Notably,
`
`notwithstanding Petitioner's claim, Petitioner does not actually address the claim
`
`limitation where beaconing is a transmission designed to attract attention to the
`
`sending data processing system location.
`
`
`
`Instead, Petitioner continues to argue that the claimed beaconing is met by
`
`Myr's disclosure of periodic transmissions. The premise that a "beacon" is a
`
`"periodic transmission" is Petitioner's construction, not PO's construction, and is
`
`wrong. In particular, Petitioner states "Petitioner is relying on Myr for its teachings
`
`that information can be sent between devices using periodic transmissions…. When
`
`the beaconing functionality of Myr is applied to Himmelstein, … the combination
`
`results in Himmelstein's mobile unit beaconing the communication packet 50 to
`
`41125788.1.docx
`
`7
`
`
`
`
`
`other mobile units 16 (e.g., sending periodic transmissions to other mobile units
`
`16)." Reply at 8. As discussed, periodicity is not the hallmark of a beacon. On this,
`
`both experts agree. EX2036, 26:2-14 (A beacon "could be periodic or it could be
`
`continuous…."); EX2025, ¶¶ 64-65. Indeed, even Petitioner itself recognizes that a
`
`"beacon" can be continuous or periodically beaconed out. Pet. at 21 ("For instance,
`
`instead of beaconing the signal continuously when a mobile device may be located
`
`in a faraway part of the same building, the sending user may only beacon the signal
`
`at times when receiving mobile devices are likely to be nearby, making the
`
`notification more useful and more likely to lead to productive networking."). Thus,
`
`as even Petitioner's statements demonstrate, whether Myr teaches periodic
`
`transmissions or not is irrelevant to beaconing.
`
`
`
`Absent from Petitioner's Reply is any evidence to support whether either Myr
`
`or Himmelstein or the combination disclose a transmission intended to draw
`
`attention to the sending data processing system location. Petitioner offers nothing
`
`but the unsupported statement that:
`
`"the combination of Himmelstein and Myr teaches a periodic
`transmission of location information associated with the sending data
`system to be used by each receiving mobile data processing system for
`determining their own location information. In other words, the
`periodic transmission taught by the combination of Himmelstein and
`Myr is intended to indicate the position of the sending data processing
`system." Reply at 8.
`
`
`41125788.1.docx
`
`8
`
`
`
`
`
`While use of the information by the mobile data processing system to determine its
`
`own location is part of the claim (EX1001, 118:43-46), that does not make it a
`
`beacon. What is glaringly absent from Petitioner conclusion is any evidence that the
`
`combination of Himmelstein and Myr is intended to attract attention to a specific
`
`location. Petitioner fails to cite to any evidence to support its claim that "[i]n other
`
`words, the periodic transmission taught by the combination of Himmelstein and Myr
`
`is intended to indicate the position of the sending data processing system." Reply at
`
`8; Petition at 42. Instead, the purported showing that this claim limitation is
`
`supposedly met by the prior art is based only on unsupported attorney argument,
`
`which is not evidence at all and cannot carry the day. Worse yet, that a mobile data
`
`processing system may be able to determine its own location is not relevant to
`
`whether a transmission is a beacon, which attracts attention to the sender.
`
`B.
`
`The Himmelstein/Myr Combination Does Not Disclose
`"Transmitting … The Broadcast Unidirectional Wireless
`Data Record For Receipt By A Plurality Of Receiving
`Mobile Data Processing System In A Wireless Vicinity Of
`The Sending Data Processing System"
`
`In the POR, PO explained how the primary embodiment of Himmelstein
`
`
`
`
`relied on by Petitioner failed to disclose the subject claim limitation because all
`
`transmission are through base stations. POR at 24-26. Petitioner does not refute this
`
`position.
`
`41125788.1.docx
`
`9
`
`
`
`
`
`
`
`Instead, Petitioner falls back to its arguments based on the secondary
`
`embodiment in Himmelstein of a Bluetooth piconet. Reply at 9, citing piconet
`
`embodiment. Petitioner then argues that Himmelstein, in claim 28, recites
`
`transmission directly from mobile units to other mobile units. Id. at 10. Petitioner
`
`fails, however, to pay heed to the fact that claim 28 is written in means-plus-function
`
`format. EX1005, 17:23-45. Therefore, as a matter of law, the scope of the claim is
`
`limited to "only the structure, materials, or acts described in the specification as
`
`corresponding to the claimed function and equivalents thereof." Williamson v. Citrix
`
`Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). As such, one must still look to
`
`the specific architecture of the systems disclosed. The only disclosed system in
`
`Himmelstein that even arguably teaches transmissions that are not via a base station
`
`are the Bluetooth piconet, i.e., the system of the secondary embodiment on which
`
`Petitioner relies.
`
`
`
`While the specific protocols used in transmitting data in a piconet are not set
`
`forth in Himmelstein, the structure of such a system is well understood in the art. Dr.
`
`Sharony explained this in his declaration. EX2025, ¶¶ 72-73.
`
`A piconet is a well-understood type of network. In a piconet, a "master"
`device would take the place of the base station controller, and transmit
`all messages to the various "slave" devices. A "piconet" is understood
`in the art to be a specific network architecture for computers consisting
`of one master and up to seven active slaves of Bluetooth enabled
`devices. A "master" acts as the hub of the piconet. This master initiates
`a communication to a specific slave and allocates a slot or slots during
`which that slave can reply (master transmits only in even-numbered
`
`41125788.1.docx
`
`10
`
`
`
`
`
`time slots, and slaves transmit only in odd-numbered time slots).
`During the allocated slot or slots, the slave replies. Slaves communicate
`only in slots allocated by the master. There is no communication from
`any slave directly to another slave. Id.
`
`
`Petitioner offers no evidence to rebut Dr. Sharony's opinion. Instead, Petitioner does
`
`nothing more than repeat the disclosure of Himmelstein: "[t]he mobile devices can
`
`form a secure piconet and communicate among the connected devices. Accordingly,
`
`using this technology, mobile units 16 can talk directly to other mobile units without
`
`intervention of the base stations 14 and the base station controller 20." Reply at 11.
`
`
`
`This discussion, however, only states that "base stations" are not needed. This
`
`is because, as Dr. Sharony explained, the control over the sending of messages in a
`
`piconet is controlled by a master and there is no direct connection between any slave
`
`to another slave, and the master takes the place of a base station. EX2025, ¶¶ 72-73.
`
`
`
`Petitioner argues that "PO has failed to contemplate the scenario in which the
`
`primary or master device is the 'sending data processing system.'" Reply at 11.
`
`Petitioner then hypothesizes that "any mobile unit 16 of a plurality of mobile units
`
`can act as the primary device in the piconet." Id. One failure in Petitioner's argument,
`
`however, is that this is not an argument that was made in the Petition. Further,
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`Petitioner cites to no evidence to support that a POSITA would interpret
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`Himmelstein or a piconet in this manner. As such, Petitioner's argument should be
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`disregarded as not previously identified and because it is without evidentiary basis.
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`41125788.1.docx
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`11
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`
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`C. A POSITA Would Have Had No Reason To
`Combine Himmelstein And Myr
`
`Petitioner's Reply argues against Himmelstein's teaching away from the use
`
`of cell phones with the assertion that Himmelstein's Fig. 2 schematic could be
`
`satisfied by a cell phone. Reply at 14. Petitioner's argument is both unsupported and
`
`entirely speculative. Petitioner cites to no evidence, such as expert testimony, to
`
`support that "a person skilled in the art would understand that a mobile device or cell
`
`phone would certainly satisfy" the requirements of the Himmelstein device. Id.
`
`Instead, the only disclosure in Himmelstein disparages cell phones as a
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`communication medium.
`
`include cellular
`Conventional mobile communication systems
`telephones and CB or two-way radios. When using a cell phone as a
`means of mobile communication, there is no practical way of
`discovering whether a neighboring vehicle operator possesses a cell
`phone. Additionally, there is no process for determining the phone
`number of the targeted cell phones. Accordingly, the cell phone as a
`communication medium is severely limited. EX1005, col. 1:28-35.
`
`Further to this disparagement of cell phones, Himmelstein includes no teaching, and
`
`Petitioner is unable to point to any, that a cell phone could be used as part of the
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`Himmelstein system.
`
`Himmelstein's criticism of cell phones is textbook teaching away that defeats
`
`obviousness. Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir.
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`2013). Unlike in other cases where the Federal Circuit found a lack of evidence of
`
`teaching away based on the prior art teachings of certain preferred embodiments,
`12
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`41125788.1.docx
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`
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`
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`here, Himmelstein actually disparages cell phones as a communication medium and
`
`does not suggest that its system could use cell phones, while Myr is a system using
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`cell phones.
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`
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`Next, Petitioner disputes the argument that utilizing the piconet embodiment
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`of Himmelstein with the system of Myr would subvert the purpose of Myr. Petitioner
`
`does not dispute that the piconet embodiment of Himmelstein would, in fact subvert
`
`the purpose of Myr. Reply at 15. Rather, Petitioner argues without support that
`
`because they are suggesting modification of Himmelstein with the teachings of Myr,
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`that the "piconet is irrelevant." Not only does Petitioner fail to provide any legal
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`authority for its assertion, it also makes no sense.
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`
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`As discussed, Petitioner relies on the piconet embodiment of Himmelstein,
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`and seeks to modify it with the periodicity of Myr's transmission. While, as
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`discussed, such periodicity misses the point, Petitioner's argument still revolves
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`around modifying the Himmelstein piconet with Myr's periodic transmission. Thus,
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`to say the "piconet is irrelevant" defies any logic.
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`
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`The very purpose of Myr is based on gathering data from as many cell phones
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`as possible. EX1006, ¶¶ [0036], [0037]. Yet, Petitioner is relying on the piconet
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`embodiment of Himmelstein for the purported transmission of data directly from one
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`device to another, which, by its nature, is limited to 8 devices (1 master and 7 slaves).
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`41125788.1.docx
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`13
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`This would discourage combining Myr with a piconet because the essential data
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`gathering feature of Myr would be subverted, and demonstrates non-obviousness.
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`IV. Objective Indicia Of Non-Obviousness Demonstrates
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`The Patentability Of The Challenged Claims
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`Evidence of objective indicia of nonobviousness must be considered if
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`present. Chemours Company FC, LLC v. Daikin Industries, 4 F.4th 1370, 1377 (Fed.
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`Cir. 2021). Yet, Petitioner fails to rebut the substantial evidence of objective indicia
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`of non-obviousness. Instead, Petitioner presents only incorrect statements of law and
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`unsupported attorney argument.
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`A. Copying
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`PO's Response presented evidence establishing that prior to introduction of
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`the device accused of infringement in the co-pending district court litigation,
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`Petitioner was in possession of PO's technical information for its LBX systems.
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`EX2028, ¶¶21-51. Shortly thereafter, Petitioner introduced its accused devices. The
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`evidence submitted also demonstrates that the accused devices meet at least one
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`claim of the '804 Patent. EX2028, Ex. I. All of this evidence is sufficient for a trier
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`of fact to conclude that Petitioner copied PO's patented technology.
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`In its Reply, Petitioner does not deny any of the above evidence. Instead,
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`Petitioner misleadingly excerpts Liqwd, Inc. v. L'Oreal USA, Inc., 941 F.3d 1133
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`(Fed. Cir. 2019), citing, Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d
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`1317 (Fed. Cir. 2004) for the proposition that "copying requires duplication of
`14
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`41125788.1.docx
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`
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`features of the patentee's work based on access to that work, lest all infringement be
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`mistakenly treated as copying. Reply at 16. What Petitioner selectively omits is the
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`discussion in Liqwd following its excerpted portion, where the court recognized that
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`in addition to the copying scenario of Iron Grip, even access to an issued patent or
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`publication about a patented method is relevant to copying. Id., citing, DePuy Spine,
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`Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1328-29 (Fed. Cir. 2009),
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`Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337,
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`1347-48 (Fed. Cir. 2013). Here, it is undisputed Petitioner had access to the '804
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`Patent and PO's technical information before launching its infringing product.
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`EX2028 at ¶¶ 51-52. It is also notable Petitioner failed to offer any evidence of
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`development of the accused devices without benefit of PO's technical information.
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`Petitioner even resorts to arguing that it would have been "impossible for the
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`Petitioner to have copied the claimed invention," because the patent issued after
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`Petitioner announced its launch of the accused device. Reply at 17. The problem
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`with this argument is that the '804 Patent is a continuation of U.S. Patent 8,600,341,
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`and has the identical disclosure, and which was published on September 17, 2009.
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`Petitioner was provided with technical information related to PO's entire LBX
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`portfolio prior to the launch of its device, including that found in the '804 Patent.
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`41125788.1.docx
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`15
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`B. Commercial Success
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`Petitioner states "PO has failed to show commercial success of their patented
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`invention." Reply at 19. This is incorrect. Petitioner does not deny it touted the
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`location-based architecture central to the '804 Patent in its presentations of its
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`iBeacon technology. According to Petitioner's own information, location-based
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`architecture was critical to the iBeacon, and it was incumbent on the user to
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`configure these feature
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